took  Publishers 
AAIN    STREET 
FALO  3,  N.  Y. 


r 

*> 
1811 


UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


"    ,.      .  .";  **#• 

PATENT  LAWS 

AND 

PRACTICE   OF  OBTAINING 

LETTERS   PATENT 

FOR    INVENTIONS 

IN 

THE  UNITED  STATES  AND  FOREIGN  COUNTRIES; 


INCLUDING 


COPY-RIGHT  AND  TRADE-MARK  LAWS. 


BY  CHARLES  SIDNEY  WHITMAN, 

Ml 
OF  THE  BAR  Of  THE  SUPREME  COURT  OF  THE  UNITED  STATES. 


'The  end  of  our  foundation  is  the  enlarging  of  the  bounds  of  human  empire  to  the 
effecting  of  all  things  possible." — LORD  BACON  :  New  Atlantis. 


WASHINGTON  : 

W.    H      &    O.    H.    MORRISON. 

1871. 


Entered  according  to  act  of  Congress,  in  the  year  1870,  by 

W.  H.  &  O.  H.  MORRISON, 
In  the  Office  of  the  Librarian  of  Congress,  at  Washington,  D.  C, 

r 


CAST ON    PRESS    OF 
SHERMAN   It    CO.,    PHILADELPHIA 


PEEFACE. 


The  compiler  of  the  following  pages  lays  no  claim  to  the 
authorship  of  an  original  work  upon  the  law  of  patents. 
Entertaining  the  opinion  that  the  speculations  even  of  the 
most  learned  are  of  but  little  importance  to  those  who  are 
seeking  to  know  simply  what  the  law  is,  and  actuated  by  a 
desire  to  render  the  work  strictly  authoritative  and  practical, 
he  has  adopted,  almost  exclusively,  the  conclusions  of  those 
whose  opinions  have  been  dignified  with  the  mantle  of  official 
authority. 

The  work  is  the  result  of  an  endeavor  to  compile  from 
various  sources,  some  of  which  are  not  easily  accessible,  reli- 
able and  practical  information,  which  the  author  has  found 
to  be  indispensable  in  the  course  of  his  own  professional  prac- 
tice, and  which  he  believes  will  be  useful  to  others. 

Although  intended  to  convey  practical  information  to 
inventors,  patentees,  manufacturers,  and  others  who  have 
occasion  to  inform  themselves  particularly  concerning  patent 
matters,  it  is  believed  that  the  work  will  be  found  useful  to 
members  of  the  legal  profession  generally,  since  it  sets  forth 
the  state  of  the  law  resulting  from  decisions  more  recent  than 
those  of  any  other  work  published  up  to  the  present  time, 
and  contains  the  exact  text  of  the  late  act  of  Congress,  by 
which  the  entire  legislation  in  respect  to  patents  and  copy- 


755621 


iv  PREFACE. 

right  was  repealed,  and  a  more  complete  and  carefully-drawn 
law  substituted. 

In  the  preparation  of  Part  II  the  author  has  freely  availed 
himself  of  the  publications  of  the  British  Patent  Office  and  the 
standard  European  authorities.  In  preparing  those  portions 
of  the  work  which  relate  to  the  practice  of  obtaining  patents 
in  the  United  States,  he  has  been  greatly  indebted  to  the 
labors  of  the  late  able  Commissioner  of  Patents,  Mr.  S.  S. 
FISHER,  many  of  whose  decisions  he  has  given  in  extenso. 
The  author  is  also  under  obligations  to  other  officers  of  the 
Patent  Office,  as  well  as  to  members  of  the  bench  and  bar 
of  the  District  of  Columbia,  for  valuable  assistance  and 
timely  counsel,  which  he  desires  most  sincerely  to  acknow- 
ledge. 

CHARLES  S.  WHITMAN. 

529  SEVENTH  STREET, 

WASHINGTON,  D.  C., 

January  4, 1871. 


TABLE  OF  CONTENTS. 


PATENT,  COPYBIGHT,  AND  TRADE-MARK  LAWS  OF  THE  UNITED  STATES. 

CHAPTER  I. 
Of  organization,  duties,  and  general  provisions 1 

CHAPTER  II, 
Of  patents 7 

CHAPTER  III. 
Of  design  patents 34 

CHAPTER  IV. 
Of  trade-marks.. 36 

CHAPTER  V. 
Of  copyrights 41 

CHAPTER  VI. 
Repealing  clause  and  schedule 52 


II. 


SYNOPSIS  OF  THE  LAWS  AND  PRACTICE  OF  LETTEES  PATENT  FOR  INVENTION 
IN  THE  PRINCIPAL  FOREIGN  STATES. 

CHAPTER  I. 
Argentine  Republic  ..................................................................     59' 

CHAPTER  II. 
Austria  .............  .....................................................................     61 

v 


VI  TABLE  OF  CONTENTS. 

CHAPTER  III. 
The  Grand  Duchy  of  Baden  and  petty  States  of  Germany 67 

CHAPTER  IV. 
Bavaria , 68 

CHAPTER  V. 
Belgium 71 

CHAPTER,  VI. 
Great  Britain  and  Ireland 77 

CHAPTER  VII. 
Analysis  of  the  British  patent  laws 84 

CHAPTER  VIII. 
Forms  and  proceedings  to  obtain  a  patent,  (Great  Britain) 102 

CHAPTER  IX. 
Patent  laws  of  the  Dominion  of  Canada 112 

CHAPTER  X. 
Who  may  obtain  patents,  (Canada) 115 

CHAPTER  XI. 
Conditions  and  formalities,  (Canada) 117 

CHAPTER  XII. 
Contents,  duration,  surrender,  reissue  of  patents,  and  disclaimers 120 

CHAPTER  XIII. 
Assignment  and  infringement  of  patents,  (Canada) 123 

CHAPTER  XIV. 
Nullity,  impeachment,  and  voidance  of  patents,  (Canada) 126 

CHAPTER  XV. 
Patents  issued  under  former  laws,  (Canada) 128 

CHAPTER  XVI. 
Tariff  of  fees,  (Canada) < 129 


TABLE  OF  CONTENTS.  Vll 

CHAPTER  XVII. 
Miscellaneous  provisions,  (Canada) ^ 131 

CHAPTER  XVIII. 
Rales,  regulations,  and  forms  of  the  Canadian  Patent  Office 137 

CHAPTER  XIX. 
Cape  of  Good  Hope. 147 

CHAPTER  XX. 
Ceylon 149 

CHAPTER  XXI. 
Cuba,  Porto  Rico,  and  the  Philippine  Islands 150 

CHAPTER  XXII. 
France 151 

CHAPTER  XXIII. 
Greece 156 

CHAPTER  XXIV. 
British  Guiana 156 

CHAPTER  XXV. 

India 158 

CHAPTER  XXVI. 
Italy 164 

CHAPTER  XXVII. 
Jamaica 169 

CHAPTER  XXVIII. 
Mauritius  and  Dependencies 171 

CHAPTER  XXIX. 
Mexico 172 

CHAPTER  XXX. 
The  Netherlands ...  ,.  173 


Vlll  TABLE  OF  CONTENTS. 

CHAPTER  XXXI. 
Newfoundland 175 

CHAPTER  XXXII. 
New  South  Wales 177 

CHAPTER  XXXIII. 
New  Zealand. 178 

CHAPTER  XXXIV. 
Portugal 179 

CHAPTER  XXXV. 
Prussia 181 

CHAPTER  XXXVI. 
Queensland 183 

CHAPTER  XXXVII. 
Russia 183 

CHAPTER  XXXVIII. 
Saxony ; 186 

CHAPTER  XXXIX. 
Spain 188 

CHAPTER  XL. 
Sweden 191 

CHAPTER  XLI. 
Tasmania 193 

CHAPTER  XLII. 
Trinidad ,... 195 

CHAPTER  XLIII. 
Victoria,  (Australia,) 195 

CHAPTER  XLIV. 
West  Indies,  (Dutch,) 200 

CHAPTER  XLV. 
Wurtemberg...... 201 


TABLE  OF  CONTENTS.  IX 


III. 


PBOCEDTTBE  IN  THE  UNITED  STATES  PATENT  OFFICE,  WITH  FOBMS,  NOTES, 
AND  AUTHORITIES. 


CHAPTER  I. 
Caveat  ........................  .  ..................................  —  ....................  207 

CHAPTER  II. 
Subject-matter  of  the  application  ................................................  218 

CHAPTER  III. 
Requisites  of  the  application  .........................................  „  ...........  259 

CHAPTER  IV. 
The  application  and  petition  ......................................................  270 

CHAPTER  V. 
The  specification  ..........................................  ~  ........  ~  ................  283 

CHAPTER  VI. 
Drawings  and  model  ........  w  .......................................................  308 

CHAPTER  VII. 
Oath  of  applicant  .....................................................................  317 

CHAPTER  VIII. 
Classification  of  subjects  of  invention  ..........................................  324 

CHAPTER  IX. 
Examination  and  amendment  .....................................................  329 

CHAPTER  X. 
Renewal  of  an  application  upon  which  the  final  fee  has  not  been  paid..  343 

CHAPTER  XI. 

Renewal  of  withdrawn  and  rejected  applications  filed  prior  to  July  8, 
1870....  ..  345 


X  TABLE  OF  CONTENTS. 

CHAPTER  XII. 
Appeal  to  examiners-in-chief 349 

CHAPTER  XIII. 
Appeal  to  the  Commissioner  in  person 365 

CHAPTER  XIV. 
Appeal  to  the  supreme  court  of  the  District  of  Columbia 377 

CHAPTER  XV. 
Mandamus  to  the  Commissioner 409 

CHAPTER  XVI. 
Designs 427 

CHAPTER  XVII. 
Trade-marks 446 

CHAPTER  XVIII. 
Interference 450 

CHAPTER  XIX. 
Affidavits  and  depositions 494 

CHAPTER  XX.  f 
Evidence 505 

CHAPTER  XXI. 
Reissues 551 

CHAPTER  XXII. 
Extension 584 

CHAPTER  XXIII. 
Disclaimer 609 

CHAPTER  XXIV. 
The  patent 616 

CHAPTER  XXV. 
Patent  Office  fees....  ..  617 


TABLE  OF  CONTENTS.  XI 


CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

CHAPTER  I. 
Assignments  ...........................................................................  623 

CHAPTER  II. 
Licenses  and  contracts  ...............................................................  634 

CHAPTER  III. 
British  assignments  ...................................................................  642 

CHAPTER  IV. 
French  assignments  and  powers  of  attorney  ...................................  655 

CHAPTER  V. 
Assignment  of  copyright  ............................................................  660 

CHAPTER  VI. 
Forms  of  procedure  in  patent  causes  ............................................  662 


I. 


PATENT,  COPY-RIGHT,  AND  TRADE-MARK  LAWS 


REVISED,  CONSOLIDATED,  AND  AMENDED  BY  THE  ACT 
APPROVED  JUl^  8,  1870. 


PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 


THE   UNITED  STATES. 


THE   PATENT   OFFICE. 
I.  Of  Organization,  Duties,  and  General  Provisions. 


SEC. 

1.  Patent  Office  established. 

2.  Officers  and  employees. 

3.  Additional  employees. 

4.  Salaries. 

5.  Oath  of  Office. 

6.  Official  bonds. 

7.  Duties  of  Commissioner. 

8.  Franking  privilege. 

9.  Annual  report. 

10.  Duties  of  examiners-in-chief. 

11.  Acting  Commissioner. 


SEC. 

12.  Seal  of  office. 

13.  Display  of  models. 

14.  Restoring  models. 

15.  Library. 

16.  Employees  not  to  acquire  inter- 
•    .      est  in  patents. 

17.  Refusal  to  recognize  agent. 

18.  Printing  papers. 

19.  Power  of  the  Commissioner  to 

make  rules. 

20.  Printing  patents,  drawings,  &c. 


1.  There  shall  be  attached  to  the  Depart-  Patent  pmce  es- 

,  .  «»  i  tablished. 

meat  o±  the  Interior  the  office,  heretofore  -r-r-r 

4  July,  1836,  eh. 

established,   known   as   the   Patent    Office,  35l'^l'Tv-^ "£• 
wherein  all   records,  books,  models,  draw-108>22>y-9>p>395- 
ings,  specifications,  and  other  papers   and 
things  pertaining  to  patents  shall  be  safely 
kept  and  preserved. 

2.  The  officers  and  employees  of  said  office  officers  and  em- 
shall  continue  to  be  one  Commissioner  of  — 

Patents,  one  Assistant  Commissioner,  and  357,2 Vv'.  sfp-'nai 
1 


PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 


^1nt  consent  of  the  Senate;  one  chief  clerk,  one 

47,  %  1,  3,  v.  9,  pp.  _  ^  ' 

233'M3ar  18,51  ch  examiner  in  charge  of  interferences,  twenty- 
323fAug.,i852,Geh.'two  principal  examiners,  twenty-two  first 
"i'lra'/.'is^'c^.^ssi^ant  examiners,  twenty-two  second  as- 
log^ii3'  v<  10)  pp'  sistant  examiners,  one  librarian,  one  machin- 
175,^10,'  vfio,Cp'.  ist,  five  clerks  of  class  four,  six  clerks  of 
is  Aug.,i856,  ch.  class  three,  fifty  clerks  of  class  two,  forty- 

129,  g  9,  v.  11,  p.  91.  ,.  1      -i  i?      i  -i 

2  Mar.,  1861,  ch.  five  clerks  of  class  one,  and  one  messenger 

88,gg2,7,v.l2,pp.  .  \  Vni 

246,  247.  and  purchasing  clerk,  all  of  whom  shall  be 

29  Mar.,  1867,  eh.  \  °  „•,-*• 

17,  g  i,  v.  is,  p.  10.  appointed  by  the  secretary  of  the  Interior, 
121,21,  v!io,p.'293.  upon  nomination  of  the  Commissioner  of 
Patents. 


AdditiioneL  em"  ^'  l^^ie  Secretary  of  the  Interior  may  also 
~  s  Mar.,  1869,  ch.  appoint,  upon  like  nomination,  such  addi- 
i2i,?i,v.i5,p.293.^ona|  QJepj^g  of  classes  two  and  one,  and  of 

lower  grades,  copyists  of  drawings,  female 
copyists,  skilled  laborers,  laborers,  and  watch- 
men, as  may  be  from  time  to  time  appropri- 
ated for  by  Congress. 

salaries.          4.  The  annual  salaries  of  the  officers  and 
Of  the  patent  Oflice  shall  be  as 


31  Aug.,  1852,  ch.  fnllftwq  . 
108,  |  l,v.  10,  p.  95.  IC 

97?if  1,3;  v8  10,  p£:     Of  the  Commissioner  of  Patents,  four  thou- 

2C22  Apr.,  1854,  ch.  sand  five  hundred  dollars. 

276.^  lf  2>  v'  10>  p'     Of  the  Assistant  Commissioner,  three  thou- 

3  Mar.,  1855,  ch.  T    T    -i-i 

175,  gg  10,  25,  v.  10,  sand  dollars. 

PP2  Mar.,  1861,  ch.     Of  the  examiners-m-chicf,  three  thousand 

88,  24,  v.  12,  p.  247.   ,     ,,  , 

3  Mar.,  1869,  ch.  dollars  each. 

287i  293!  Of  the  chief  clerk,  two  thousand  five  hun- 

dred dollars. 


OF  THE  UNITED  STATES.  3 

Of  the  examiner  in  charge  of  interferences, 
two  thousand  five  hundred  dollars. 

Of  the  principal  examiners,  two  thousand 
five  hundred  dollars  each. 

Of  the  first  assistant  examiners,  one  thou- 
sand eight  hundred  dollars  each. 

Of  the  second  assistant  examiners,  one 
thousand  six  hundred  each. 

Of  the  librarian,  one  thousand  eight  hun- 
dred dollars. 

Of  the  machinist,  one  thousand  six  hun- 
dred dollars. 

Of  the  clerks  of  class  four,  one  thousand 
eight  hundred  dollars  each. 

Of  the  clerks  of  class  three,  one  thousand 
six  hundred  dollars  each. 

Of  the  clerks  of  class  two,  one  thousand 
four  hundred  dollars  each. 

Of  the  clerks  of  class  one,  one  thousand 
two  hundred  dollars  each. 

Of  the  messenger  and  purchasing  clerk, 
one  thousand  dollars. 

Of  laborers  and  watchmen,  seven  hundred 
and  twenty  dollars  each. 

Of  the  additional  clerks,  copyists  of  draw- 
ings, female  copyists,  and  skilled  laborers, 
such  rates  as  may  be  fixed  by  the  acts  mak- 
ing appropriations  for  them. 

5.  All  officers  and  employees  of  the  Patent  oath  of  office. 


Office  shall,  before  entering  upon  their  duties,    4  July,  isae,  ch. 
make  oath  or  affirmation  truly  and  faithfully 
to  execute  the  trusts  committed  to  them. 


4  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

official  bonds.       6.  The  Commissioner  and  chief  clerk,  be- 

357<al3yv1'f3G'ns'^ore  entering  upon  their  duties,  shall  sever- 

io81§Aiugv  iifp'os' a^y  &ive  bond,  with  sureties,  to  the  Treasurer 

of  the  United  States,  the  former  in  the  sum 

often  thousand  dollars,  and  the  latter  in  the 

sum  of  five  thousand  dollars,  conditioned  for 

the  faithful  discharge  of  their  duties,  and  that 

they  will  render  to  the  proper  officers  of  the 

Treasury  a  true  account  of  all  money  received 

by  virtue  of  their  office. 

Duties  of  com-     7.  It  shall  be  the  duty  of  the  Commissioner, 

missioner.  ^  ' 

4juiv  1836  eh"  un(^er  the  direction  of  the  Secretary  of  the 
353'!iarV'i849  "h"  Interior,  to  superintend  or  perform  all  the 
IPS,  §2,  v.  o,  P.  395.  duties  respecting  the  granting  and  issuing 
254.Wc  of  patents  which  herein  are,  or  may  here- 

of., 35.    after  jj^  ky  jaw  Jirected  to  be  done;  and 

he  shall  have  charge  of  all  books,  records, 
papers,  models,  machines,  and  other-  things 
belonging  to  said  office. 
Franking  privi-     8.  The  Commissioner  may  send  and  re- 

lege.  _  *  .    m 

4  jniy  1836  eh  ceiye  bj  mail,  free  of  postage,  letters,  printed 
3527§1May;pi848',matter»  anc^  packages  relating  to  the  business 
m*7>  §4)^9'  p'of  his  office,  including  Patent  Office  reports. 
Annual  Report.,      9.  The  Commissioner  shall  lay  before  Con- 
p'i95'Sress5  m  ^e  month  of  January,  annually,  a 
p.'^!  report,  giving  a  detailed  statement  of  all 
i5)Cp;money8  received  for  patents,  for  copies  of 
records  or  drawings,  or  from  any  other  source 
whatever;  a  detailed  statement  of  all  expend- 
itures for  contingent  and  miscellaneous  ex- 
penses;   a  list  of  all  patents  which  were 
granted  during  the  preceding  year,  designa- 


OF  THE  UNITED  STATES. 

i 

ting  under  proper  heads  the  subjects  of  such 
patents;  an  alphabetical  list  of  the  patentees, 
with  their  places  of  residence;  a  list  of  all 
patents  which  have  been  extended  during 
the  year;  and  such  other  information  of  the 
condition  of  the  Patent  Office  as  may  be 
useful  to  Congress  or  the  public. 

10.  The  examiners-in-chief  shall  be  per-  Duties  of 

,»  ji-ii  IT  -i        •       iners-in-chief. 

sons  of  competent  legal  knowledge  and  sci 


2  Mar.,  1861,  ch. 

entmc  ability,  whose  duty  it  shall  be,  on  the  ss,  2  2,  v.  12,  p.  2*6. 

written  petition  of  the  appellant,  to  revise 

and  determine  upon  the  validity  of  the  ad- 

verse decisions  of  examiners  upon  applica- 

tions for  patents  and  for  reissues  of  patents 

and  in  interference  cases;  and,  when  required 

by  the  Commissioner,  they  shall  hear  and 

report  upon  claims  for  extensions,  and  per- 

form such  other  like  duties  as  he  may  assign 

them. 

11.  In  case  of  the  death,  resignation,  ab-  Acting  commis- 

70  '  sioner. 

sence,  or  sickness  of  the  Commissioner,  his    .,   .  .  —  T-- 

£&    July,     louo, 

duties  shall  devolve  upon  the  Assistant  Com-  £hj6|2  7-  2  3.  v-  1(5> 
inissioner   until    a  successor    shall  be  ap-   l2wood'.&8Min., 
pointed  or  such  absence  or  sickness   shall  ^  How.,  41. 
cease. 

12.  The  Commissioner  shall  cause  a  seal   seal  of  office. 
to  be  provided  for  said  office,  with  such  de-  35*  Juto  g836'^' 
vice  as.  the   President  may  approve,  with    4'Mc'Leap  371 
which  all  records  or  papers  issued  from  said   \f$^^ 
office,  to  be  used  in  evidence,  shall  be  authen- 

ticated. 

13.  Thp-  Commissioner  shall  cause  to  be  Di8play6£f  mod' 

1* 


6  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

• 

35*  July,  1836^  ch.  classified  and  arranged  in  suitable  cases,  in 

^  the  rooms  and  galleries  provided  for  that 

purpose,  the  models,  specimens  of  composi- 

tion, fabrics,  manufactures,  works  of  art,  and 

designs,  which  have  been  or  shall  be  depos- 

ited in  said  office;  and  said  rooms  and  gal- 

leries  shall   be  kept  open  during  suitable 

hours  for  public  inspection. 

Restoring   mod-     14.  The  Commissioner  may  restore  to  the 

els. 

2  Mar  lad  ch  re8Pective  applicants  such  of  the  models  be- 

es, §5,  v.i2,  p-247.  iongmg  to  rejected  applications  as  he  shall 

not  think  necessary  to  be  preserved,  or  he 

may  sell  or  otherwise  dispose  of  them  after 

the  application  has  been  finally  rejected  for 

one  year,  paying  the  proceeds  into  the  Treas- 

ury, as  other  patent  moneys  are  directed  to 

be  paid. 

Library.          15.  There  shall  be  purchased,  for  the  use 

357,  ^w,'  1vf65,c  p'.  °^  Sa^  °ffice?  a  library  of  such  scientific 
works  and  periodicals,  both  foreign  and 
American,  as  may  aid  the  officers  in  the  dis- 
charge of  their  duties,  not  exceeding  the 
amount  annually  appropriated  by  Congress 
for  that  purpose. 

Employees  not  to     16.  All  officers  and  employees  of  the  Pat- 

acquire  interest          s\m         i  -111      • 

in  patents.        ent  Omce  shall  be  incapable,  during  the  pe- 


357  JgU2yv  5836'u8'  r^0<^  f°r  which  the.v  8nall  hold  their  appoint- 
ments, to  acquire  or  take,  directly  or  indi- 
rectly, except  by  inheritance  or  bequest,  any 
right  or  interest  in  any  patent  issued  by  said 
office. 

17.  For  gross  misconduct  the  Commis- 


OF  THE  UNITED  STATES.  7 

sioner  may  refuse  to  recognize  any  person  as   2  Mar.,i86i,  ch. 

J  .  .  88,  g  8,  v.  12,  p.  247. 

a  patent  agent,  either  generally  or  in  any   i*  HOW.,  575. 
particular  case;    but  the  reasons  for  such 
refusal  shall  be  duly  recorded  and  be  subject 
to  the  approval  of  the  Secretary  of  the  Inte- 
rior. 

18.  The  Commissioner  may  require   allpriptin8  papers. 
papers  filed  in  the  Patent  Office,  if  not  cor-8*™*Tv>™^ 
rectly,  legibly,  and   clearly  written,  to  be 

printed  at  the  cost  of  the  party  filing  them. 

19.  The  Commissioner,  subject  to  the  ap-  Power,  of  com- 

*  *       missioner      to 

proval  of  the  Secretary  of  the  Interior,  may   make  rule9- 
from  time  to  time  establish  rules  and  regu-    6pet>>  218- 
lations,  not  inconsistent  with  law,  for  the 
conduct  of  proceedings  in  the  Patent  Office. 

20.  The  Commissioner  may  print  or  cause  Printing  patents, 

»    *  drawings,  <fec. 

to  be  printed  copies  of  the  specifications  of    2Mar  1861  ch 
all  letters  patent  and  of  the  drawings  of  the  ^ 14>  v- 12>  p< 
same,  and  copies  of  the  claims  of  current 
issues,  and  copies  of  such  laws,  decisions, 
rules,  regulations,  and  circulars  as  may  be 
necessary  for  the  information  of  the  public. 

II.  Of  Patents. 


SEC. 

21.  Issuing,  signing,  and  recording 

patents. 

22.  Contents  and  grant  of  patents. 

23.  Date  of  patents. 

24.  What  may  be  patented. 

25.  Foreign  inventions  may  be  pat- 

ented. 
28.  Description  and  specification. 


SEC. 

27.  Drawings. 

28.  Specimen  of  ingredients. 

29.  Model. 

30.  Oath  of  applicant ;  before  whom 

taken. 

31.  Examination  of  application. 

32.  Time  to  complete  and  prosecute 

applications. 


PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 


SEC. 

33.  Patents  may  issue  to  assignees. 

34.  Patents  may  issue  to  legal  rep- 

resentatives. 

35.  Renewed  application  in  lapsed, 

withdrawn,  andrejectedcases. 

36.  Assignments,  grants,  and  con- 

veyances. 

37.  Right  of  purchasers  before  pat- 

ent. 

38.  Patented  articles  to  be  marked. 

39.  False  marking. 

40.  Caveats. 

41.  References  upon  rejection. 

42.  Interferences. 

43.  Affidavits  and  depositions. 

44.  Duty  of  clerk  of  court. 

45.  Fees  and  rights  of  witnesses. 

46.  Appeal  to  examiners-in-chief. 

47.  Appeal  to  Commissioner. 

48.  Appeal  to  Supreme  Court  of  Dis- 

trict of  Columbia. 

49.  When  to  court,  duty  of  appel- 

lant. 

50.  Duty  of  court. 

51.  Duty  of  appellant  and  Commis- 

sioner. 

52.  Bill  in  equity. 

53.  Reissues. 


SEC. 

54.  Disclaimers. 

55.  Actions ;  where  cognizable. 

56.  Appeal   to  Supreme  Court  of 

United  States. 

57.  Copies  of  records  and  foreign 

patents. 

58.  Proceedings  in  equity  in  inter- 

fering patents. 

59.  Damages  for  infringement. 

60.  Actions  for  infringement  prior 

to  disclaimer. 

61.  Notice  of  special  matter. 

62.  Prior  knowledge  or  use  in  for- 

eign country. 

63.  Extension  of  patent;  duty  of 

applicant. 

64:  Notice  of  application  to  be  pub- 
lished. 

65.  Case  to  be  referred  to  exam- 

iner. 

66.  Hearing  of  case;  granting  of 

extension. 

67.  Extension ;  how  far  for  the  ben- 

efit of  assignees. 

68.  Patent  fees. 

69.  Patent  fees;    to  whom  paid; 

who  to  disburse  money. 

70.  Money  paid  by  mistake. 


issuing,  signing,     21.  All  patents  shall  be  issued  in  the  name 
patents.       _  of  the  United  States  of  America,  under  the 
357  J?U5lyv  5836'ici8'seal  of  the  Patent  Office,  and  shall  be  signed 
108  f2arv  9®49'395'  ky  tne  Secretary  of  the  Interior  and  coun- 
tersigned by  the  Commissioner,  and  they 
shall  be  recorded,  together  with  the  specifi- 
cation, in  said  office,  in  books  to  be  kept  for 
that  purpose. 


OF  THE  UNITED  STATES.  9 

22.  Every  patent  shall  contain  a  short  title  contents  and 

..«,,.  .  ,.  grant    of     pat- 

or  description  of  the  invention  or  discovery,    ents. 

correctly  indicating  its  nature  and  design,  and  35*  ^/'^'f'  ^ 
a  grant  to  the  patentee,  his  heirs  or  assigns,  "3'^.,  1837>  ch. 
for  the  term  of  seventeen  years,  of  the  exclu-45^^^;^;1^; 
sive  right  to  make,  use,  and  vend  the  said88'§10'v;12'p-240- 
invention  or  discoverv  throughout  the  United  4oh!o,3ia  ' 

"  7  Pet   319 

States  and  the  Territories  thereof,  referring   iswend.,395. 

±t  '^       ,•        e      ii  ' .'       i          ^  ?     2  McLean,  178. 

to  the  specification  for  the  particulars  thereof ;    a  McLean,  297. 

.  f  2  Blatchf.,  23. 

and  a  copy  of  said  specifications  and  of  the    2  wash.,  126. 

r</  Pet.,  C.  C.,  341. 

drawings  shall  be  annexed  to  the  patent  and    ^^hl3e1'4450- 
be  a  part  thereof.  2  storV.  ei*.  621. 

2  Blatchf.,  9.    4  How.,  711.    6  How.,  478. 

23.  Every  patent  shall  date  as  of  a  day  not  Date  of  patents. 
later  than  six  months  from  the  time  at  which    ±  July,  ISSG,  ch. 
it  was  passed  and  allowed,  and  notice  thereof  120!  121.' 

3  Mar.,  1863,  ch. 

was  sent  to  the  applicant  or  his  agent;  and  102,  g  3,  v.  12,  p. 
if  the  final  fee  shall  not  be  paid  within  that 
period,  the  patent  shall  be  withheld. 

24.  Any  person  who  has  invented  or  dis-  What  may  be  pat- 
covered  any  new  and  useful  art,  machine, ented' 

~  ...  „  4  July,  1836,  ch. 

manufacture,  or  composition  of  matter,  or 357,21 6,7,^.5, pp. 

,         p  ,   .  ,  -,          <>  no,  120. 

any  new  and  useful  improvement  thereof,    3  Mar.,  1339,  ch, 

ll  J  V  •       4.1.  •  '  88,  §  i,  v.  5,  p.  354. 

not  known  or  used  by  others  in  this  country,    29  Aug.,  1342, 

i  .,       ,   .  .  ,  eh.  263,  g  3,  v.  6, 

and  not  patented  or  described  in  any  printed  PP-  543, 544. 

.  .  .  .  2  Mar->  1861>  ch- 

publication  in  this  or  any  foreign  country,  ^  g  11,  v.  12,  p 
before  his  invention  or  discovery  thereof,  and    Pet  c  c   341> 
not  in  public  use  or  on  sale  for  more  than  two  ^ wash,  12. 
years  prior  to  his  application,  unless  the  same    L^ow'.,2^. 
is  proved  to  have  been  abandoned,  may,  upon   i°G^uT'48o96' 
payment  of  the  craty  required  by  law,  and 


10  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

H  low.;  175.     other  due  proceedings  had,  obtain  a  patent 

2Wall.,'jr.,3GO.   tV,prpfnT, 

3  Sum.,  518.         lut         or' 

Brightly     99.    4  McLean,  180,  461.    4  Wash.,  52.    1  Blatchf.,  248, 
463,  494.    1  Wash.,  171.    3  Wash.,  198.    1  Gall.,  439,  479.    2  Gall.,  53. 

Foreign    inven-     25.  ~No  person  shall  be  debarred  from  re- 

tions    may    be       .    .  . 

patented.        ceivmg  a  patent  for  his  invention  or  discov- 

357  Jgusy'v18s6'  pp'  er^'  nor  8kaU  any  Patent  be  declared  invalid 

123>M2a1r.  issg  ch  ^v  reason  °f  its  having  been  first  patented  or 

ss,  §  6,  v.5,  P-  354-  caused  to  be  patented  in  a  foreign  country; 

805  McLean>  78>  provided  the  same  shall  not  have  been  intro- 

iow.,  112.     duced  in£0  public  use  in  the  United  States 

for  more  than  two  years  prior  to  the  applica- 

tion, and  that  the  patent  shall  expire  at  the 

same  time  with  the  foreign  patent,  or,  if  there 

be  more  than  one,  at  the  same  time  with  the 

one  having  the  shortest  term;  but  in  no  case 

shall  it  be  in  force  more  than  seventeen  years. 

Description  and     26.  Before  any  inventor  or  discoverer  shall 

specification.  .  //?!••  ,•  j- 

'  4  July  1836  ch  receive  a  patent  tor  his  invention  or  discov- 
357,  g  e,  y.  5,  p.  119.  erv^  kg  ghaji  make  application  therefor,  in 

Pet.?c.  c!9486i.  writing,  to  the  Commissioner,  and  shall  file 

1  Mass.,  187,  476.  .         ,-,         -r>    ,  r\^r»  -^  i  •     .• 

2  Mass.,  118.      in  the  latent  Office  a  written  description 

4  Wash.,  14,  73.       -     , 

i  Paine,  207,  450.  of  the  same,  and  of  the  manner  and  process 

7  Wheat.,  434.  n  .  -,.  i 

i  story,  285,  292.  of  making,  constructing,  compounding,  and 

3  McLean,  260,  &'  6'  5" 

441.444.447.  using  it,  in  such  full,  clear,  concise,  and  exact 
3Q3  wood.  &Min.,  terms  as  to  enable  any  person  skilled  in  the 
'  ar*  or  8Cience  to  which  it  appertains,  or  with 


19'267'  which  it  is  most  nearly  connected,  to  make, 
sbgf'  construct,  compound,  and  use  the  same  ;  and, 
24How!*i68.     in  case  °f  a  machine,  he  shall  explain  the 
22SHow>.,4i39.     principle  thereof,  and  the  best  mode  in  which 
i  curt?,  26'3?78'  he  has  contemplated  applying  that  principle, 
so  as  to  distinguish  it  from  other  inventions; 


OF  THE  UNITED  STATES.  11 

and  lie  shall  particularly  point  out  and  dis- 
tinctly claim  the  part,  improvement,  or  com- 
bination which  he  claims  as  his  invention  or 
discovery;  and  said  specification  and  claim 
shall  be  signed  by  the  inventor  and  attested 
by  two  witnesses, 

27.  "When  the  nature  of  the  case  admits     Drawings. 


of  drawings,  the  applicant  shall  furnish  one    *  J^y.  15836'1cj^- 
copy,  signed  by  the  inventor  or  his  attorney  453**{.ai^  ^w*^; 
in  fact  and  attested  by  two  witnesses,  which   4  Ma!,s  9 
shall  be  filed  in  the  Patent  Ofiice  ;  and  a  copy   |  s£J$£a' 
of  said  drawings,  to  be  furnished  by  the  Pat- 
ent Office,  shall  be  attached  to  the  patent  as 
part  of  the  specification. 

28.  When  the  invention  or  discovery  is  specimen  of  in- 

„  .   .'  ,  ,.  gredients. 

of  a  composition  of  matter,  the  applicant, 


4  Jul   1836  ch 
if  required  by  the  Commissioner,  shall  fur-  ^7,  §  e,'  v.  i,  P. 

nish  specimens  of  ingredients  and  of  the  com- 
position, sufficient  in  quantity  for  the  purpose 
of  experiment. 

29.  In  all  cases  which  admit  of  representa-       Model- 
tion  by  model,  the  applicant,  if  required  byj^.i^r.^m 
the  Commissioner,  shall  furnish  one  of  con-    6  HOW.,  435. 
venient  size  to  exhibit  advantageously  the    2oaHow.,  409. 
several  parts  of  his  invention  or  discovery. 

30.  The  applicant  shall  make  oath  or  af-  ^f^^wS 
firmation  that  he  does  verily  believe  himself    taken- 


,1,1  •     •        -i  j     r»       ,     •  T          4  Julv,  183G,  ch. 

to  be  the  original  and  first  inventor  or  dis-  357,  g  e.V.  5.  P.  no. 

n    .  ,  i  .  *  3  Mar.,  1837,  ch. 

coverer  of  the  art,  machine,  manufacture,  45,  §13,  v.  5,  p.  194. 

,,  i-ii  29  Aug.,  1842,  Ch. 

composition,  or  improvement  for  which  he  253,  34,  v.  5,  p.  544. 
solicits  a  patent;  that  he  does  not  know,  and   \  Hadw.448i 
does  not  believe,  that  the  same  was  ever  be-   3  Fi^esi. 


12  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

fore  known  or  used ;  and  shall  state  of  what 
country  he  is  a  citizen.  And  said  oath  or 
affirmation  may  be  made  before  any  person 
within  the  United  States  authorized  by  law 
to  administer  oaths,  or,  when  the  applicant 
resides  in  a  foreign  country,  before  any  min- 
ister, charge  d'affaires,  consul,  or  commercial 
agent  holding  com*mission  under  the  Gov- 
ernment of  the  United  States,  or  before  any 
notary  public  of  the  foreign  country  in  which 
the  applicant  may  be. 

Examination  of     31.  On  the  filing  of  any  such  application, 
-  and  the  payment  of  the  duty  required  by  law, 


4  July,  1836,  ch.  .      .  . 

357,  g  7,  v.  5,  pp.  the  Commissioner  shall  cause  an  examination 

119,  120. 

-  2pet  ]8 to  be  made  of  the  alleged  new  invention  or 

i  waHCljr'' 349   discovery;    and  if  on  such  examination  it 
i  Biatciif.  509.  shall  appear  that  the  claimant  is  justly  enti- 
tled to  a  patent  under  the  law,  and  that  the 
same  is  sufficiently  useful  and  important,  the 
Commissioner  shall  issue  a  patent  therefor. 
Time  to  complete     32.  All  applications  for  patents  shall  be 

and    prosecute  * 

applications,    completed   and    prepared   for   examination 
««2 Fior''  18iol> ch'  within  two  vears  after  the  filing  of  the  peti- 

oo,  g  L£t  V.  LZt  pp.  *> 

248,249.  tion,  and  in  default  thereof,  or  upon  failure 

of  the  applicant  to  prosecute  the  same  within 
two  years  after  any  action  therein,  of  which 
notice'  shall  have  been  given  to  the  applicant, 
they  shall  be  regarded  as  abandoned  by  the 
parties  thereto,  unless  it  be  shown  to  the 
satisfaction  of  the  Commissioner  that  such 
delay  was  unavoidable. 

33.  Patents  may  be  granted  and  issued  or 


OF  THE  UNITED  STATES.  13 

reissued  to  the  assignee  of  the  inventor  or   a  Mar.,  1337,  eh. 

&  .          „         45,  §  6,  v.  5,  p.  193. 

discoverer,  the  assignment  thereof  being  first  '  a  Biatchf  509  ' 

entered  of  record  in  the  Patent  Office;  but    i£™i,43o. 

in  such  case  the  application  for  the  patent    s^11-.343- 

shall  be  made  and  the  specification  sworn  to 

by  the  inventor  or  discoverer;  and  also,  if 

he  be  living,  in  case  of  an  application  for 

reissue. 

34.  When  any  person,  having  made  any  Patents  may  is- 

J    f  ?  *       sue  to  legal  rep- 

new  invention  or  discovery  for  which  a  patent    resentatives. 


might  have  been  granted,  dies  before  a  patent  3_;J  i 
is  granted,  the  right  of  applying  for  and  ob-  2  Fialu>  499. 
taining  the  patent  shall  devolve  on  his  execu- 
tor or  administrator,  in  trust  for  the  heirs  at 
law  of  the  deceased,  in  case  he  shall  have 
died  intestate;  or  if  he  shall  have  left  a  will, 
disposing  of  the  same,  then  in  trust  for  his 
devisees,  in  as  full  manner  and  on  the  same 
terms  and  conditions  as  the  same  might  have 
been  claimed  or  enjoyed  by  him  in  his  life- 
time; and,  when  the  application  shall  be  made 
by  such  legal  representatives,  the  oath  or 
affirmation  required  to  be  made  shall  be  so 
varied  in  form  that  it  can  be  made  by  them. 

35.  Any  person  who  has  an  interest  in  an  Renewed  applies- 

.  .  *  tion  in  lapsed, 

invention  or  discovery,  whether  as  inventor,    withdrawn,  and 

»  '  '     rejected  eases. 

discoverer,  or  assignee,  for  which  a  patent  25June,iso4,ch. 
was  ordered  to  issue  upon  the  payment  of^'Ku^w^^h. 
the  final  fee,  but  who  has  failed  to  make  1All 
payment  thereof  within  six  months  from  the  2  Filh'.',  i!7' 
time  at  which  it  was  passed  and  allowed,  and  3  Fish'.',  134. 

notice  thereof  was  sent  to  the  applicant  or 
2 


14  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

his  agent,  shall  have  a  right  to  make  an  ap- 
plication for  a  patent  for  such  invention  or 
discovery  the  same  as  in  the  case  of  an  orig- 
inal application:  Provided,  That  the  second 
application  be  made  within  two  years  after 
the  allowance  of  the  original  application. 
But  no  person  shall  be  held  responsible  in 
damages  for  the  manufacture  or  use  of  any 
article  or  thing  for  which  a  patent,  as  afore- 
said, was  ordered  to  issue,  prior  to  the  issue 
thereof:  And  provided  further.  That  when  an 
application  for  a  patent  has  been  rejected  or 
withdrawn,  prior  to  the  passage  of  this  act, 
the  applicant  shall  have  six  months  from  the 
date  of  such  passage  to  renew  his  application 
or  to  file  a  new  one;  and,  if  he  omit  to  do 
either,  his  application  shall  be  held  to  have 
been  abandoned.  Upon  the  hearing  of  such 
renewed  applications  abandonment  shall  be 
considered  as  a  question  of  fact. 
Assigm'ts,grants,  36.  Every  patent,  or  any  interest  therein, 

and  conveyances.    ,,,.  .,,      . 

•  4Ju]    1836  ch  shall  be  assignable  in  law,  by  an  instrument 

357,  g  11,  v.  5,  p.  jn  writing;  and  the  patentee,  or  his  assigns 

a  McLean,  428.  or  legal  representatives,  may,  in  like  manner, 

iJ.  Blatchf"  50>  grant  and  convey  an  exclusive  right  under 

io^ow*494.32'  his  patent  to  the  whole  or  any  specified  part 

is  HOW!;  294!     of  the  United  States;  and  said  assignment, 

4  Mass.,  15.  iiii'i 

2  story, 542, 615.  grant,  or  conveyance  shall  be  void  as  against 

3  Story,  131.  ,  ,  ,-, 

4  HOW.,  711.      any  subsequent  purchaser  or  mortgagee  for  a 

15  Barb     S   C 

315.  '  valuable  consideration,  without  notice,  unless 

19  How    221 

j     17  HOW.','  451!     it  is  recorded  in  the  Patent  Office  within 

'>       1  Fish.,  327. 

three  months  from  the  date  thereof. 


OF  THE  UNITED  STATES.  15 


37.  Every  person  who  may  have  purchased  Right  of 

J  *  rt.    ,  .     ,  ers  before  pat- 

of  the  inventor,  or  with  his  knowledge  and  ent-  _ 
consent  may  have  constructed,  any  newly-in-  883  ™™->  ™™>  c£; 
vented  or  discovered  machine,  or  other  pat-  ^  _ 


eutable  article,  prior  to  the  application  by  i  now^aig2.54' 

the  inventor  or  discoverer  for  a  patent,  or  zcnrt.',  &&.' 

sold  or  used  one  so  constructed,  shall  have  i  wood.  &  kin. 

the  right  to  use,  and  vend  to  others  to  be  21  HOW.,  330. 

,     *  .„      ,,  .  ,  ,  -,       1  Blatchf.,  250. 

used,  the  specific  thing  so  made  or  purchased, 
without  liability  therefor. 

38.  It  shall  be  the  duty  of  all  patentees,  patented  articles 

-t   .1     •  •  111  •  •  to  be  marked. 

and  their  assigns  and  legal  representatives,  - 

,        „      „  ,   .  ,.  2  Mar.,  1861,  ch. 

and  of  all  persons  making  or  vending  anyss,  ^13,  v.  12,  p. 

patented  article  for  or  under  them,  to  give"  sFish.,  249,374. 

sufficient  notice  to  the  public  that  the  same 

is  patented,  either  by  fixing  thereon  the  word 

"patented,"  together  with  the  day  and  year 

the  patent  was  granted;  or  when,  from  the 

character  of  the  article,  this  cannot  be  done, 

by  fixing  to  it,  or  to  the  package  wherein  one 

or  more  of  them  is  inclosed,  a  label  contain- 

ing the  like  notice;  and  in  any  suit  for  in- 

fringement, by  the  party  failing  so  to  mark, 

no  damages  shall  be  recovered  by  the  plain- 

tiff, except  on  proof  that  the  defendant  was 

duly  notified  of  the  infringement,  and  con- 

tinued after  such  notice  to  make,  use,  or 

vend  the  article  so  patented. 

39.  If  any  person  shall,  in  any  manner,  False  marking. 
mark  upon  anything  made,  used,  or  sold  by    29  Aug.,  1342, 

J  Y    .  eh.  888,  jo,  Y.  8,  p. 

him,  for  which  he  has  not  obtained  a  patent,  5j^  _ 
the  name  or  any  imitation  of  the  name  of    2Curt-'606- 


16  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

i  Fish.,  647.      any  person  who  has  obtained  a  patent  there- 

3  Fish.,  72.  J   *  *. 

for,  without  the  consent  or  such  patentee  or 
•his  assigns  or  legal  representatives;  or  shall 
in  any  manner  mark  upon  or  affix  to  any 
Buch  patented  article  the  word  "patent"  or 
"patentee,"  or  the  words  "letters  patent," 
or  any  word  of  like  import,  with  intent  to 
imitate  or  counterfeit  the  mark  or  device  of 
the  patentee,  without  having  the  licenseyor 
consent  of  such  patentee  or  his  assigns  or 
legal  representatives;  or  shall  in  any  manner 
mark  upon  or  affix  to  any  unpatented  article 
the  word  "patent,"  or  any  word  importing 
that  the  same  is  patented,  for  the  purpose  of 
deceiving  the  public,  he  shall  be  liable  for 
every  such  offense  to  a  penalty  of  not  less 
than  one  hundred  dollars,  with  costs;  one 
moiety  of  said  penalty  to  the  person  who 
shall  sue  for  the  same,  and  the  o.ther  to  the 
use  of  the  United  States,  to  be  recovered  by 
suit  in  any  district  court  of  the  United  States 
within  whose  jurisdiction  such  offense  may 
have  been  committed, 
caveats.  40.  Any  citizen  of  the  United  States  who 


4  July, isae,  ch.  shall  have  made  any  new  invention  or  dis- 

357,  $  8,  12,  v.  6,  -I      ••      n     -I       •         „        i 

PP.  i-jo,i2i.         covery,  and  shall  desire  further  time  to  ma- 

2  Mar.,  1801,  ch.  J  ' 

247 2  9>  v-  12>  P-ture  the  same,  may,  on  payment  of  the  duty 
e  McLean,  304. required  by  law,  file  in  the  Patent  Office  a 
.'m''9'  caveat,  setting  forth  the  design  thereof  and 
of  its  distinguishing  characteristics,  and  pray- 
ing protection  of  his  right  until  he  shall  have 
matured  his  invention;  and  such  caveat  shall 


OF  THE  TJKITED  STATES.       <".  £  17 

be  filed  in  the  confidential  archives  of  tlie 
office  and  preserved  in  secrecy,  and  shall  be 
operative  for  the  term  of  one  year  from  the 
filing  thereof;  and  if  application  shall  be 
made  within  the  year  by  any  other  person 
for  a  patent  with  which  such  caveat  would 
in  any  manner  interfere,  the  Commissioner 
shall  deposit  the  description,  specification, 
drawings,  and  model  of  such  application  in 
like  manner  in  the  confidential  archives  of 
the  office,  and  give  notice  thereof,  by  mail, 
to  the  person  filing  the  caveat,  who,  if  he 
would  avail  himself  of  his  caveat,  shall  file 
his  description,  specification,  drawings,  and 
model  within  three  months  from  the  time  of 
placing  said  notice  in  the  post  office  in  Wash- 
ington, with  the  usual  time  required  for  trans- 
mitting it  to  the  caveator  added  thereto, 
which  time  shall  be  indorsed  on  the  notice. 
And  an  alien  shall  have  the  privilege  herein 
granted,  if  he  shall  have  resided  in  the  United 
States  one  year  next  preceding  the  filing  of 
his  caveat,  and  made  oath  of  his  intention  to 
become  a  citizen. 

41.  Whenever,  on  examination,  any  claim  References  upon 

f  ±  '          •  J    f  -U  rejection. 

for  a  patent  is  reiected  for  any  reason  what- — -       — — 

J  J  4  July,  1836,  ch. 

ever,  the  Commissioner  shall  notify  the  ap-^.o,  v.  s,  PP. 
plicant  thereof,  giving  him  briefly  the  reasons 
for  such  rejection,  together  with  such  infor- 
mation and  references  as  may  be  useful  in 
judging  of  the  propriety  of  renewing  his 
application  or  of  altering  his  specification; 
2* 


18  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

and  if,  after  receiving  such  notice,  the  appli- 
cant shall  persist  in  his  claim  for  a  patent, 
with  or  without  altering  his  specifications, 
the  Commissioner  shall  order  a  re-examina- 
tion of  the  case, 
interferences.  42.  "Whenever  an  application  is  made  for 


4  July,  1836,  ch.  a  patent  which,  in  the  opinion  of  the  Com- 

357,  g8,'  V.  5,  pp.       5    .  .  '      .  *         . 

120,  121.  missioner,  would  interfere  with  any  pending 

application,  or  with  any  unexpired  patent, 
he  shall  give  notice  thereof  to  the  applicants, 
or  applicant  and  patentee,  as  the  case  may 
be,  and  shall  direct  the  primary  examiner  to 
proceed  to  determine  the  question  of  priority 
of  invention.  And  -the  Commissioner  may 
issue  a  patent  to  the  party  who  shall  be  ad- 
judged the  prior  inventor,  unless  the  adverse 
party  shall  appeal  from  the  decision  of  the 
primary  examiner,  or  of  the  board  of  exam- 
iners-in-chief,  as  the  case  may  be,  within 
,such  time,  not  less  than  twenty  days,  as  the 
Commissioner  shall  prescribe. 

Affidavits  and  de-  43.  The  Commissioner  may  establish  rules 
3  M  ^or  taking  affidavits  and  depositions  required 

12>  Y'  5>  p'  in  cases  pending  in  the  Patent  Office,  and 
i%18i2Cp'such  affidavits  and  depositions  may  be  taken 
before  any  officer  authorized  by  law  to  take 
depositions  to  be  used  in  the  courts  of  the 
United  States,  or  of  the  State  where  the 
officer  resides. 

Duty  of  eierk  of  44.  The  clerk  of  any  court  of  the  United 
2  Mar.,  1861,  ch.  States,  for  any  district  or  Territory  wherein 

88^8  1,  v.  12,  p.  testimony  is  to  be  taken  for  use  in  any  con- 


355 


OF  THE  UNITED  STATES.  19 

tested  case  pending  in  the  Patent  Office, 
shall,  upon  the  application  of  any  jfarty 
thereto,  or  his  agent  or  attorney,  issue  sub- 
poena for  any  witness  residing  or  being  within 
said  district  or  Territory,  commanding  him 
to  appear  and  testify  before  any  officer  in 
said  district  or  Territory  authorized  to  take 
depositions  and  affidavits,  at  any  time  and 
place  in  the  subpoena  stated;  and  if  any  wit- 
ness, after  being  duly  served  with  such  sub- 
poena, shall  neglect  or  refuse  to  appear,  or, 
after  appearing,  shall  refuse  to  testify,  the 
judge  of  the  court  whose  clerk  issued  the 
subprena  may,  on  proof  of  such  neglect  or 
refusal,  enforce  obedience  to  the  process, 
or. punish  the  disobedience  as  in  other  like 
cases. 

45.  Every  witness  duly  subpoenaed  and  in  Fees  and  rights  of 

^  _.    ..  witnesses. 

attendance  shall  be  allowed  the  same  fees  as  2  Mar  1861  ch 
are  allowed  to  witnesses  attending  the  courts  ^8  J>  v-  12>  P- 
of  the  United  States,  but  no  witness  shall  be 
required  to  attend  at  any  place  more  than 
forty  miles  from  the  place  where  the  sub- 
poena is  served  upon  him,  nor  be  deemed 
guilty  of  contempt  for  disobeying  such  sub- 
poena, unless  his  fees  and  traveling  expenses 
in  going  to,  returning  from,  and  one  day's 
attendance  at  the  place  of  examination,  are 
paid  or  tendered  him  at  the  time  of  the  ser- 
vice of  the  subpoena,  nor  for  refusing  to  dis- 
close any  secret  invention  or  discovery  made 
or  owned  by  himself. 


20  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

Appeal  to  exam-     46.  Every  applicant  for  a  patent  or  the  re- 

mers-m-chief.     .  " .    ** 

2  Mar  1861  ch  188ue  °f  a  patent,  any  of  the  claims  of  which 

lies §  2>  v'  12>  p-have  been  twice  rejected,  and  every  party  to 

45?§Tv75?p!'i93.' an  interference,  may  appeal  from  the  decision 

ch2.7i43,ugei,  v.8i4l  °f  the  primary  examiner,  or  of  the  examiner 

PP. 76, 77.  jn  change  of  interference,  in  such  case  to  the 

board   of    examiners-in-chief,   having    once 

paid  the  fee  for  such  appeal  provided  by  law. 

Appeal  to  com-     47.  If  such  party  is  dissatisfied  with  the 

missioner.  .   .  J  .  . 

--decision  of  the  exammers-in-chief,  he  may, 

2  Mar.,  1861,  ch.  *  ' 

246 2  2>  v' 12>  p>  on  payment  of  the  duty  required  by  law, 

appeal  to  the  Commissioner  in  person. 
Appeal    to    su-     48.  If  such  party,  except  a  party  to  an  in- 

£reme  court  of  .       ,.          .    „  , 

istrict  of  Co-  terierence,  is  dissatisfied  with  the  decision 

lumbia. 

3  Mar  1839  ch  °*  ^e  Commissioner,  he  may  appeal  to  the 
PP  tli10^1' >v' 5'  8uPreme  court  of  the  District  of  Columbia 

so Aug.,i852, ch.  siftino-  in  hano 

107,  §1,  V.10,p.75.  H1LL1U&  1U   Ud-uc' 

when  to  court;     49.  When  an  appeal  is  taken  to  the  su- 
iant  °        " '  preme  court  of  the  District  of  Columbia,  the 


a  Mar.,  issg,  ch.  appellant  shall  give  notice  thereof  to  the 

88,  g  11,   v.  5,  pp.     J 

354, 355.  Commissioner,  and  file  in  the  Patent  Office, 

within  such  time  as  the  Commissioner  shall 
appoint,  his  reasons  of  appeal,  specifically 
set  forth  in  writing. 

Duty  of  court.       50.  It  shall  be  the  duty  of  said  court,  on 

354  July,  1836.  ch.  petition,  to  hear  and  determine  such  appeal, 

12s'Mar  1838  ch  an(^  *°  revise  tbe  decision  appealed  from  in  a 

354  \ll'  v' 5>  pp'  summary  way,  on  the  evidence  produced  be- 

ch^0io7,ui''i,128,5v!^ore  *ne  Commissioner,  at  such  early  and 

10,  P.  75.  convenient  time  as  the  court  may  appoint, 

notifying  the  Commissioner  of  the  time  and 

place  of  hearing;  and  the  revision  shall  be 


OF  THE  UNITED  STATES. 


21 


confined  to  the  points  set  forth  in  the  reasons 
of  appeal.  And,  after  hearing  the  case,  the 
court  shall  return  to  the  Commissioner  a  cer- 
tificate of  its  proceedings  and  decision,  which 
shall  be  entered  of  record  in  the  Patent 
Office,  and  govern  the  further  proceedings 
in  the  case.  But  no  opinion  or  decision  of 
the  court  in  any  such  case  shall  preclude  any 
person  interested  from  the  right  to  contest 
the  validity  of  such  patent  in  any  court 
wherein  the  same  may  be  'called  in  question. 

51.  On  receiving  notice  of  the  time  and  Duty  of  appellant 

.  *••  -1-I/-N  •          apd     Commis- 

place  ot  hearing  such  appeal,  the  Commis-    sioner.  _ 

sioner  shall  notify  all  parties  who  appear  to883^[-'^8359'ch- 

be  interested  therein,  in  such  manner  as  the354-355- 

court  may  prescribe.     The  party  appealing 

shall  lay  before  the  court  certified  copies  of 

all  the  original  papers  and  evidence  in  the 

case,  and  the  Commissioner  shall  furnish  it 

with  the  grounds  of  his  decision,  fully  set 

forth  in  writing,  touching  all  the  points  in- 

volved by  the  reasons  of  appeal.     And  at  the 

request  of  any  party  interested,  or  of  the 

court,  the  Commissioner  and  the  examiners 

may  be  examined  under  oath,  in  explanation 

of  the  principles  of  the  machine  or  other 

thing  for  which  a  patent  is  demanded. 

52.  Whenever  a  patent  on  application  is    BUI  in  equity. 


refused,  for  any  reason  whatever,  either  by    a  Mar.,  1339,  ch. 

*  88,  g  10. 

the  Commissioner  or  by  the  supreme  court    2Fish  83  - 
of  the  District  of  Columbia  upon  appeal  from 
the  Commissioner,  the  applicant  may  have 


22  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

remedy  by  bill  in  equity;  and  the  court  hav- 
ing cognizance  thereof,  on  notice  to  adverse 
parties  and  other  due  proceedings  had,  may 
adjudge  that  such  applicant  is  entitled,  accord- 
ing to  law,  to  receive  a  patent  for  his  inven- 
tion, as  specified  in  his  claim,  or  for  any  part 
thereof,  as  the  facts  in  the  case  may  appear. 
And  such  adjudication,  if  it  be  in  favor  of 
the  right  of  the  applicant,  shall  authorize 
the  Commissioner  to  issue  such  patent,  on 
the  applicant  filing  in  the  Patent  Office  a 
copy  of  the  adjudication,  and  otherwise  com- 
plying with  the  requisitions  of  law.  And  in 
all  cases  where  there  is  no  opposing  party  a 
copy  of  the  bill  shall  be  served  on  the  Com- 
missioner, and  all  expenses  of  the  proceed- 
ing shall  be  paid  by  the  applicant,  whether 
the  final  decision  is  in  his  favor  or  not. 
Reissues.  53.  Whenever  any  patent  is  inoperative  or 
4  July,  isse,  eh.  invalid,  by  reason  of  a  defective  or  insuffi- 

357,  §  13,  v.  5,  p.  122.     .  .„       ,.  ,  ,,     , 

3  Mar.,  1837,  ch.  cient  specification,  or  by  reason  ot  the  pat- 

45,  g  8,  v.  5,  p.  193.  i     •       •  I-  •  A-  J. 

—  entee  claiming  as  his  own  invention  or  dis- 

6  Pet,,  242. 

i4Ppet  34G2       covery  more  than  he  had  a  right  to  claim  as 

altor^'m'voa  newJ  if  the  error  has  arisen  by  inadvertence, 

4 1"  wn> 4028688  accident,  or  mistake,  and  without  any  fraud- 

220?   H°w''   L12>ulent  or  deceptive  intention,  the  Commis- 

"w^odl'&Min.,  8i°ner  shall,  on  the  surrender  of  such  patent 

12i'wood.&Min.,an(l  the  payment  of  the  duty  required  by 

26i'B?atchf.,i6n.  law,  cause  a  new  patent  for  the  same  inven- 

i38.W°°d'&Min''tion,  and  in  accordance  with  the  corrected 

2  Wall.,  jr.,  102.  .,,       ,.  ,       ,  ,    ,        ,, 

2  McLean,  37,  specifications,  to  be  issued  to  the  patentee, 
',  ice.  or,  in  the  case  of  his  death  or  assignment  of 


OF  THE  UNITED  STATES. 


23 


2  Fish.,  643. 

2  Fish.,  499. 

3  Fish.,  294. 
3  Fish.,  343. 

8  Wall.,  445. 

9  Wall.,  — . 


the  whole  or  any  undivided  part  of  the  orig-   n  cush.,  571. 

J  r  .  &        1  Fish.,  133. 

inal  patent,  to  his  executors,  administrators, 
or  assigns,  for  the  unexpired  part  of  the  term 
of  the  original  patent,  the  surrender  of 
which  shall  take  effect  upon  the  issue  of  the 
amended  patent;  and  the  Commissioner  may, 
in  his  discretion,  cause  several  patents  to  be 
issued  for  distinct  and  separate  parts  of  the 
thing  patented,  upon  demand  of  the  appli- 
cant, and  upon  payment  of  the  required  fee 
for  a  reissue  for  each  of  such  reissued  letters 
patent.  And  the  specification  and  claim  in 
every  such  case  ^hall  be  subject  to  revision 
and  restriction  in  the  same  manner  as  orig- 
inal applications  are.  And  the  patent  so 
reissued,  together  with  the  corrected  specifi- 
cation, shall  have  the  effect  and  operation  in 
law,  on  the  trial  of  all  actions  for  causes 
thereafter  arising,  as  though  the  same  had 
been  originally  filed  in  such  corrected  form; 
but  no  new  matter  shall  be  introduced  into 
the  specification,  nor,  in  case  of  a  machine 
patent,  shall  the  model  or  drawings  be 
amended,  except  each  by  the  other;  but 
when  there  is  neither  model  nor  drawing, 
amendments  may  be  made  upon  proof  satis- 
factory to  the  Commissioner  that  such  new 
matter  or  amendment  was  part  of  the  orig- 
inal invention,  and  was  omitted  from  the 
specification  by  inadvertence,  accident,  or 
mistake,  as  aforesaid. 

54.  Whenever, through  inadvertence,  acci-    Disclaimers. 


24  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

3  Mar.,  1837,  ch.  dent,  or  mistake,  and  without  any  fraudu- 

45,  $  7.  9,  v.  5,  pp.  .      '    .  .  J 

WV194.  _  lent  or  deceptive  intention,  a  patentee  has 
?  story1-^  GOO  c^airae(i  more  than  that  of  which  he  was  the 

^3  McLean,  349,  original  or  first  inventor  or  discoverer,  his 
I  Dennis56'  patent  shall  be  valid  for  all  that  part  which 

^2  whar.  Dig.,js  truly  and  justly  his  own,  provided  the 

45o.«iatchf''  245'same  is  a  material  or  substantial  part  of  the 

3  Blatchf  ,  199.     ,  i  •  ,        ,      -i  i  -,  i  . 

2Biatchf..i98.  thing  patented;  and  any  such  patentee,  his 
is  HOW!',  121.     heirs  or  assigns,  whether  of  the  whole  or 

19  How.,  106.  .  ,    .  , 

20  HOW.,  387.     any  sectional  interest  therein,  may,  on  pay- 

3Fish.,197.  _  -Til  13- 

3  Fish.,  400.  ment  of  the  duty  required  by  law,  make  dis- 
claimer of  such  parts  of  the  thing  patented 
as  he  shall  not  choose  to  claim  or  to  hold  by 
virtue  of  the  patent  or  assignment,  stating 
therein  the  extent  of  his  interest  in  such 
patent;  said  disclaimer  shall  be  in  writing, 
attested  by  one  or  more  witnesses,  and  re- 
corded in  the  Patent  Office,  and  it  shall 
thereafter  be  considered  as  part  of  the  orig- 
inal specification  to  the'  extent  of  the  inter- 
est possessed  by  the  claimant  and  by  those 
claiming  under  him  after  the  record  thereof. 
But  no  such  disclaimer  shall  affect  any  action 
pending  at  the  time  of  its  being  filed,  except 
so  far  as  may  relate  to  the  question  of  unrea- 
sonable neglect  or  delay  in  filing  it. 


Action3     where     55.  ^n  actions,  suits,  controversies,  and 

cognizable. 

4  July  1836,  ch  cases  arising  under  the  patent  laws  of  the 
States  shall  be  originally  cognizable, 


J.  crau°chh%27?'  as  well  in  equity  as  at  law,  by  the  circuit 
4Ma'ss.fi5i       courts  of  the  United  States,  or  any  district 

4  Wash.,  584.  .   ,  .,  -...,.,.  e 

2  Paine,  246.     court  having  the  powers  and  jurisdiction  01 


OF  THE  UNITED  STATES.  25 

a  circuit  court,  or  by  the  supreme  court  of  i  wood.  &  Min., 
the  District  of  Columbia,  or  of  any  Terri-63j  Biatchr.,  «c, 
tory;  and  "the  court  shall  have  power,  upon  ^^''g^ 
bill  in  equity  filed  by  any  party  aggrieved,  *°  How^oefak 
to  grant  injunctions  according  to  the  course 
and  principles  of  courts  of  equity,  to  pre- 
vent the  violation  of  any  right  secured  by 
patent,  on  such  terms  as  the  court  may  deem 
reasonable;  and  upon  a  decree  being  ren- 
dered in  any  such  case  for  an  infringement, 
the  complainant  shall  be  entitled  to  recover, 
in  addition  to  the  profits  to  be  accounted  for 
by  the  defendant,  the  damages  the  claimant 
[complainant]  has  sustained  thereby,  and  the 
court  shall  assess  the  same  or  cause  the  same 
to  be  assessed  under  its  direction,  and  the 
court  shall  have  the  same  powers  to  increase 
the  same  in  its  discretion  that  are  given  by 
this  act  to  increase  the  damages  found  by 
verdicts  in  actions  upon  the  case;  but  all 
actions  shall  be  brought  during  the  term  for 
which  the  letters  patent  shall  be  granted  or 
extended,  or  within  six  years  after  the  ex- 
piration thereof. 

56.  A  writ  of  error  or  appeal  to  the  Su- Appeal  to  the  su- 

„     .       TT    .       -Tn  T         preme  Court  of 

preme  Court  of  the  United  States  shall  he    united  states. 


from  all  judgments  and  decrees  of  any  cir-35^  g^';1!30'^- 
cuit  court,  or  of  any  district  court  exercising  ^l^-^1;^- 
the  jurisdiction  of  a  circuit  court,  or  of  the    1Blat3hf  544_ 
supreme  court  of  the  District  of  Columbia   7 HOW!', 637! 

/?  m         'L  i-  -A.  10How.,101,:MG. 

or  or  any  lerntory,  in  any  action,  suit,  con-    i5iio\v.,4;5.537. 

.    ,  .  ..  ,         10  How.,  1(«. 

troversy,  or  case,  at  law  or  in  equity,  touch-    20  HOW.,  oo,  204. 
3 


26  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

14  HOW.,  220.  ing  patent  rights,  in  the  same  manner  and 
under  the  same  circumstances  as  in  other 
judgments  and  decrees  of  such  circuit  courts, 
without  regard  to  the  sum  or  value  in  con- 
troversy. 
Capndfo0reign0pradt-  ^'  Written  or  printed  copies  of  any  rec- 

_  ents< ords,  books,  papers,  or  drawings  belonging 

357,Hv.5?p6ii8h'to  the  Patent  Office,  and  of  letters  patent 
88fgr£v!i2.bp.'249!  under  the  signature  of  the  Commissioner  or 
227^3!  vy  15, p.'ies!  Acting  Commissioner,  with  the  seal  of  office 

3  McLean, 434.  affixed,  shall  be  competent  evidence  in  all 

2  Blatchf.,  12.  r 

f  M,cLf an.  371.  cases  wherein   the  originals  could  be   evi- 

1  Wood.  &  Mm., 

26uHow  583  dence,  and  any  person  making  application 
9  wend.,  44.  therefor,  and  paying  the  fee  required  by  law, 
shall  have_  certified  copies  thereof.  And 
copies  of  the  specifications  and  drawings 
of  foreign  letters  patent,  certified  in  like 
manner,  shall  be  prima  facie  evidence  of 
the  fact  of  the  granting  of  such  foreign  let- 
ters patent,  and  of  the  date  and  contents 
thereof. 

Proceedings    in     58.  Whenever  there  shall  be  interfering 

equity  in  inter-  .  ,   .  ,. 

fering  patents,  patents,  any  person  interested  in  any  one  or 

4  July.  i83c,  eh.  such  interfering  patents,  or  in  the  working 

357,  g  16,  v.  5,  pp. 

_  of  the  invention  claimed  under  either  of  such 

3  Fish!',  522!      patents,  may  have  relief  against  the  interfer- 

ing patentee,  and  all  parties  interested  under 
him,  by  suit  in  equity  against  the  owners  of 
the  interfering  patent;  and  the  court  having 
cognizance  thereof,  as  hereinbefore  provided, 
on  notice  to  adverse  parties,  and  other  due 
proceedings  had  according  to  the  course  of 


OF   THE   UNITED   STATES.  27 

equity,  may  adjudge  and  declare  either  of  the 
patents  void  iri  whole  or  in  part,  or  inopera- 
tive, or  invalid  in  any  particular  part  of  the 
United  States,  according  to  the  interest  of  the 
parties  in  the  patent  or  the  invention  pat- 
ented. But  no  such  judgment  or  adjudica- 
tion shall  affect  the  rights  of  any  person  ex- 
cept the  parties  to  the  suit  and  those  deriving 
title  under  them  subsequent  to  the  rendition 
of  such  judgment. 

59.  Damages  for  the  infringement  of  anyi>amages  tor  m- 

J        fringement. 

patent  may  be  recovered  by  action  on  the  — 

J  J  4  July,  1830,  ch. 

case  in  any  circuit  court  of  the  United  States,  357,gu,v.5.p.i23. 


or  district  court  exercising  the  j  urisdictiou  of 
a  circuit  court,  or  in  the  supreme  court  of  the  i47.Uood'  *  Mm>1 
District  of  Columbia,  or  of  any  Territory,  in^.  BIatchf"  ^ 
the  name  of  the  party  interested,  either  as  pat-  201.  494atehf''  38> 
entee,  assignee,  or  grantee.     And  whenever   uHow^m 
in  any  such  action  a  verdict  shall  be  rendered    i  Fish^'sao.' 
for  the  plaintiff,  the  court  may  enter  judg-    2  Fish'.;  02.' 

J      .  J        &        2  Fish.,  154. 

ment  thereon  for  any  sum  above  the  amount    2  Fish.,  207. 

,.  ,  ,  2  Fish.,  088. 

found  by  the  verdict  as  the  actual  damages    sFisb^na. 
sustained,   according  to  the   circumstances 
of  the  case,  not  exceeding  three  times  the 
amount  of  such  verdict,  together  with  the 
costs. 

60.  Whenever,  through  inadvertence,  ac-  Actions  for  in- 
cident, or  mistake,  and  without  any  willful  todfseiaimer.or 
default  or  intent  to  defraud  or  mislead  the  *"•«».,  MST,  ch. 

45,  g  <J,  v.  5,  p.  104. 

public-,  a  patentee  shall  have  (in  his  specifi-  5  McLean  so 
cation)  claimed  to  be  the  original  and  first  S43  McLean  i449. 
inventor  or  discoverer  of  any  material  or  iltory!294,*6oo. 


28  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 


8:  substantial  part  of  the  thing  patented,  of 
19  HO"W''  IOG!  which  he  was  not  the  original  and  first  in 
M.tenio,'fi88.'  ventor  or  discoverer  as  aforesaid,  every  such 
8Fiflh!',4ool  patentee,  his  executors,  administrators,  and 
assigns,  whether  of  the  whole  or  any  sectional 
interest  in  the  patent,  may  maintain  a  suit  at 
law  or  in  equity  for  the  infringement  of  any 
part  thereof  which  was  bonafide.  his  own,  pro- 
vided it  shall  be  a  material  and  substantial 
part  of  the  thing  patented,  and  be  definitely 
distinguishable  from  the  parts  so  claimed, 
without  right  as  aforesaid,  notwithstanding 
the  specifications  may  embrace  more  than 
that  of  which  the  patentee  was  the  original 
or  first  inventor  or  discoverer.  But  in  every 
such  case  in  which  a  judgment  or  decree  shall 
be  rendered  for  the  plaintiff,  no  costs  shall 
be  recovered,  unless  the  proper  disclaimer  has 
been  entered  at  the  Patent  Office  before  the 
commencement  of  the  suit;  nor  shall  he  be 
entitled  to  the  benefits  of  this  section  if  he 
shall  have  unreasonably  neglected  or  delayed 
to  enter  said  disclaimer. 

Notice  of  special     61.  In  any  action  for  infringement  the  de- 

matter.  ° 

'  4  juiy,  isaii,  eh.  fendant  may  plead  the  general  issue,  and,  hav- 

123.'  2  15'  v'  5'  p'  ing  given  notice  in  writing  to  the  plaintiff  or 

3  Mar.,  1839,  ch.  -,  .  ,  ,  .    ,  -,      f 

ss,  §  7,  v.  5,  p  354.  his  attorney  thirty  days  before,  may  prove 
Pet.  c.  c.,  348.    on  trial  any  one  or  more  of  the  following 

7  Wheat.,  4G9.  •> 

4  McLean,  i79,8peciai  matters: 

ut  J.   O—  O.  •*• 


bo      First.  That  for  the  purpose  of  deceiving 
i4Wan'.',jra,'i95.  tne  public  the  description  and  specification 
6'  filed  by  the  patentee  in  the  Patent  Office  was 


OF  THE   UNITED   STATES. 


29 


made  to  contain  less  than  the  whole  truth 
relative  to  his  invention  or  discovery,  or  more 
than  is  necessary  to  produce  the  desired  ef- 
fect; or, 

Second.  That  he  had  surreptitiously  or 
unjustly  obtained  the  patent  for  that  which 
was  in  fact  invented  by  another,  who  was 
using  reasonable  diligence  in  adapting  and 
perfecting  the  same;  or, 

Third.  That  it  had  been  patented  or  de- 
scribed in  some  printed  publication  prior  to 
his  supposed  invention  or  discovery  thereof: 
or, 

Fourth.  That  he  was  not  the  original  and 
first  inventor  or  discoverer  of  any  material 
and  substantial  part  of  the  thing  patented;  or, 

Fifth.  That  it  had  been  in  public  use  or  on 
sale  in  this  country  for  more  than  two  years 
before  his  application  for  a  patent  or  had  been 
abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous 
invention,  knowledge,  or  use  of  the  thing 
patented,  the  defendant  shall  state  the  names 
of  patentees  and  the  dates  of  their  patents, 
and  when  granted,  and  the  names  and  resi- 
dences of  the  persons  alleged  to  have  invented 
or  to  have  had  the  prior  knowledge  of  the 
thing  patented  and  where  and  by  whom  it 
had  been  used;  and  if  any  one  or  more  of 
the  special  matters  alleged  shall  be  found  for 
the  defendant,  judgment  shall  be  rendered 
for  him  with  costs.  And  the  like  defenses 

3* 


15  How.,  110,141. 
23  How.,  7. 


5  McLean,  61. 
17  How..  84. 
2  Story.  441. 
1  Fish..  465. 

1  Fish.,  615. 

2  Fish.,  52. 

3  Fish.,  464. 


30  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

may  be  pleaded  in  any  suit  in  equity  for  re- 
lief against  an  alleged  infringement;  and 
proofs  of  the  same  may  be  given  upon  like 
notice  in  the  answer  of  the  defendant,  and 
with  the  like  effect. 

Pnor  knowledge  62.  "Whenever  it  shall  appear  that  the  pat- 
eign  country,  entee,  at  the  time  of  making  his  application 
4  July,  isse,  ch.  for  the  patent,  believed  himself  to  be  the 

357,   §  15,  v.   5,  p.        .     .  x  ' 

123,  _  ^original  and  first  inventor  or  discoverer  of 


e  McLean'  si's  ^e  thing  patented,  the  same  shall  not  be 
held  to  be  void  on  account  of  the  invention 
or  discovery,  or  any  part  thereof,  having  been 
known  or  used  in  a  foreign  country  before 
his  invention  or  discovery  thereof,  if  it  Had 
not  been  patented  or  described  in  a  printed 
publication. 
Extension  of  pa<>  63.  Where  the  patentee  of  any  invention 

ent.     Duty    of  r  •> 

applicant.        or  discovery,  the  patent  for  which  was  grant- 

m^iia'/lfVp.  e(^  Pri°r  *°  *ne  second  day  of  March,  eighteen 

122'Mar,  1861,  eh.  hundred  and  sixty-one,  shall  desire  an  exten- 

pp.  Hsfm'  v'12'sion  of  his  patent  beyond  the  original  term 

of  its  limitation,  he  shall  make  application 

therefor,  in  writing,  to  the  Commissioner, 

setting  forth  the  reasons  why  such  exten- 

sion should  be  granted;   and  he  shall  also 

furnish  a  written  statement  under  oath  of 

the  ascertained  value  of  the  invention  or  dis- 

covery, and  of  his  receipts  and  expenditures 

on  account  thereof,  sufficiently  in  detail  to 

exhibit  a  true  and  faithful  account  of  the  loss 

and  profit  in  any  manner  accruing  to  him 

by  reason  of  said  invention  or  discovery. 


OF   THE   UNITED   STATES.  31 

And  said  application  shall  be  filed  not  more 
than  six  months  nor  less  than  ninety  days 
before  the  expiration  of  the  original  term  of 
the  patent,  and  no  extension  shall  be  granted 
after  the  expiration  of  said  original  term. 

64.  Upon  the  receipt  of  such  application,  Notice  of  appiiea- 

*  •*•  A  tion  to  be  pub- 

and  the  payment  of  the  duty  required  by    Hshed. 
law,  the  Commissioner  shall  cause  to  be  pub-35£J?u}|'  l^cl£ 
lished  in  one  newspaper  in  the  city  of  Wash-12;^  Mar->  1861)  ch. 
ington,  and  in  such  other  papers  published  ^  12'  v'  12>  p' 
in  the  section  of  the  country  most  interested 
adversely  to  the  extension  of  the  patent  as 
he  may  deem  proper,  for  at  least  sixty  days 
prior  to  the  day  set  for  hearing  the  case,  a 
notice  of  such  application,  and  of  the  time 
and  place  when  and  where  the  same  will  be 
considered,  that  any  person  may  appear  and 
show  cause  why  the  extension  should  not  be 
granted. 

65.  On  the  publication  of  such  notice  the  case  to  be  refer- 

/-v  •       •  i       11  r>  i  Fec^     *°     exam" 

Commissioner   shall   refer  the  case  to  the    *"er. 


principal  examiner  having  charge  of  the  class  4727?¥av' 
of  inventions  to  which  it  belongs,  who  shall 
make  to  said  Commissioner  a  full  report  of 
the  case,  and  particularly  whether  the  inven- 
tion or  discovery  was  new  and  patentable 
when  the  original  patent  was  granted. 

66.  The  Commissioner  shall,  at  the  time  Hearing  of  case, 
and  place  designated  in  the  published  notice,    fio£tmi 


hear  and  decide  upon  the  evidence  produced,  35*  Jgu 

both  for  and  against  the  extension;  and  if  it1227May)1848>ch. 

'' 


47,  21,  v9,  p.as 


32  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

2  Fish.,  499.      shall  appear  to  his  satisfaction  that  the  pat- 

3  Fish.,  536. 

9  wan,  -.  entee,  without  neglect  or  fault  on  his  part, 
has  failed  to  obtain  from  the  use  and  sale  of 
his  invention  or  discovery  a  reasonable  re- 
muneration for  the  time,  ingenuity,  and  ex- 
pense bestowed  upon  it,  and  the  introduction 
of  it  into  use,  and  that  it  is  just  and  proper, 
having  due  regard  to  the  public  interest,  that 
the  term  of  the  patent  should  be  extended, 
the  said  Commissioner  shall  make  a  certifi- 
cate thereon,  renewing  and  extending  the 
said  patent  for  the  term  of  seven  years  from 
the  expiration  of  the  first  term,  which  certifi- 
cate shall  be  recorded  in  the  Patent  Office, 
and  thereupon  the  said  patent  shall  have  the 
same  effect  in  law  as  though  it  had  been 
originally  granted  for  twenty-one  years. 

Extension,   how     @7.  The  benefit  of  the  extension  of  a  pat- 
far  for  the  bene- 

nt  of  assignees.  ent  shall  extend  to  the  assignees  and  grant- 

ssT/^fs/v^Vp- ees  °f  the  right to  U8e  the  thing  patented  to 
l!i the  extent  of  their  interest  therein. 

4  How.,  682.  3  Fish.,  0.    3  Fish.,  410. 
4  McLean.  355. 

Patent  fees.        68.  The  following  shall  be  the  rates. for 

2  Mar.,  1861,  ch.  r»flf  pnt  fpps  • 
88.  §  10,  v.  12,  p.  P* 

2427  June,  1866,     On  filing  each  original  application  for  a 
ch.i43,  «i,  v.  i*.  patent,  fifteen  dollars. 

On  issuing  each  original  patent,  twenty 
dollars. 

On  filing  each  caveat,  ten  dollars. 
On  every  application  for  the  reissue  of  a 
patent,  thirty  dollars. 


OF  THE    UNITED   STATES.  33 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of 
a  patent,  fifty  dollars. 

On  the  granting  of  every  extension  of  a 
patent,  fifty  dollars. 

On  an  appeal  for  the  first  time  from  the 
primary  examiners  to  the  examiners-in-chief, 
ten  dollars. 

On  every  appeal  from  the  examiners-in- 
chief  to  the  Commissioner,  twenty  dollars. 

For  certified  copies  of  patents  and  other 
papers,  ten  cents  per  hundred  words. 

For  recording  every  assignment,  agree- 
ment, power  of  attorney,  or  other  paper,  of 
three  hundred  words  or  under,  one  dollar; 
of  over  three  hundred  and  under  one  thou- 
sand words,  two  dollars;  of  over  one  thou- 
sand words,  three  dollars. 

For  copies  of  drawings,  the  reasonable 
cost  of  making  them. 

69.  Patent  fees  may  be  paid  to  the  Com-  Patent  fees,  to 

m  />  whom   paid; 

missioner,  or  to  the  Treasurer  or  any  of  the    who  to  dis- 

•'  burse  money. 

assistant  treasurers  of  the  United  States,  or  - 

C  Aug.,  1846,  ch. 

to  any  of  the  designated  depositaries,  Ba 


tional  banks,  or  receivers  of  public  money,  ^  $  7>  v-  15>  p- 
designated  by  the  Secretary  of  the  Treasury  i2i,fi*v'.  if  flag's. 
for  that  purpose,  who  shall  give  the  depos- 
itor a  receipt  or  certificate  of  deposit  there- 
for.    And  all  money  received  at  the  Patent 
Office,  for  any  purpose  or  from  any  source 
whatever,  shall  be  paid  into  the  Treasury  as 
received,  without  any  deduction  whatever; 
3 


34  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

and  all  disbursements  for  said  office  shall  be 
made  by  the  disbursing  clerk  of  the  Interior 
Department. 
Money  paid  by     70.  The  Treasurer  of  the  United  States  is 

mistake.  , 

—  authorized  to  pay  back  any  sum  or  sums  o± 

29  Aug.,  1842,  ch.  ^    J  J 

203,3  i,v.  s,  p;5*3.  money  to  any  person  who  shall  have  paid 
the  same  into  the  Treasury,  or  to  any  re- 
ceiver or  depositary,  to  the  credit  of  the 
Treasurer,  as  for  fees  accruing  at  the  Patent 
Office  through  mistake,  certificate  thereof 
being  made  to  sa'id  Treasurer  by  the  Com- 
missioner of  Patents. 


III.  Of  Design  Patents. 


SEC. 

71.  Designs  may  be  patented. 

72.  Models  of  designs. 

73.  Term  of  design  patents. 


SEC. 

75.  Fees  for  design  patents. 

76.  Other  provisions  to  apply  to 

design  patents. 


74.  Extension  of  design  patents. 

Designs  may  be     71.  Any  person  who,  by  his  own  industry, 

patented.  .' 

—  genius,  efforts,  and  expense,  has  invented  or 

29  Aug..  1842,  ch.  ° 

MS!  Itl'  v<  5>  pp-  produced  any  new  and  original  design  for  a 


bust>   statue,    alto-relievo,   or 

,  * 

4  McLean,  180.  bas-relief  '•>  any  new  and  original  design  for 
the  printing  of  woolen,  silk,  cotton,  or  other 
fabrics;  any  new  and  original  impression, 
ornament,  pattern,  print,  or  picture,  to  be 
printed,  painted,  cast,  or  otherwise  placed  on 
or  worked  into  any  article  of  manufacture; 
or  any  new,  useful,  and  original  shape  or 
configuration  of  any  article  of  manufacture, 


OF  THE  UNITED  STATES.  35 

the  same  not  having  been  known  or  used  by 
others  before  his  invention  or  production 
thereof,  or  patented  or  described  in.  any 
printed  publication,  may,  upon  payment  of 
the  duty  required  by  law,  and  other  due 
proceedings  had,  the  same  as  in  cases  of  in- 
ventions or  discoveries,  obtain  a  patent 
therefor. 

72.  The  Commissioner  may  dispense  with  Models   of   de- 

.  ,  signs. 

models  of  designs  when  the  design  can  be — — — '  ch 
sufficiently  represented  by  drawings  or  pho-ss,  §5,v.'i2,p.'247. 
tographs. 

73.  Patents  for  designs  may  be  gran  ted  Term  ^  design 
for  the  term  of  three  years  and  six  months,    2Mar  1861  ch 
or  for  seven  years,  or  for  fourteen  years,  as®8'?11^-12'?-248- 
the  applicant  may,  in  his  application,  elect. 

74.  Patentees  of  designs  issued  prior  to  Extension  of  de- 

0  *  sign  patents. 

March  two,  eighteen  hundred  and  sixty-one, — 

J  '     2  Mar.,  1861,  ch. 

shall  be  entitled  to  extension  of  their  respect-  88,gii,v.i2, p.2«. 
ive  patents  for  the  term  of  seven  years,  in 
the  same  manner  and  under  the  same  restric- 
tions as  are  provided  for  the  extension  of 
patents  for  inventions  or  discoveries  issued 
prior  to  the  second  day  of  March,  eighteen 
hundred  and  sixty-one. 

75.  The  following  shall  be  the  rates  of  fees  Fees  for  design 

i      .  patents. 

in  design  cases: 

TH        It.  J      •  -L-U  j    ^       2  Mar.,  1801,  ch. 

ior  three  years  and  six  months,  ten  dol-88,§§  10,  n,v.  12, 

-  p.  248. 

lars. 

For  seven  years,  fifteen  dollars. 

For  fourteen  years,  thirty  dollars. 

For  all  other  cases  in  which  fees  are  re- 


36 


PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 


quired,  the  same  rates  as  in  cases  of  inven- 
tions or  discoveries, 
other  provisions     76.  That  all  the  regulations  and  provisions 

to  apply  to  de-  • 

sign  patents,    which  apply  to  the  obtaining  or  protection 
,  20  Aug.,  1842,  ch.  of  patents  for  inventions  or  discoveries,  not 

203,  g  o,  V.  5,  p.  543. 

inconsistent  with  the  provisions  of  this  act, 
shall  apply  to  patents  for  designs. 


IV.  Of  Trade-Marks. 


SEC. 

77.  Who    entitled   to   trade-marks, 

and  requirements  concerning 
the  same. 

78.  Term    for    which    trade-marks 

shall  remain  in  force. 

79.  Remedy   for   wrongful    use    of 

trade-marks. 

80.  Proof  of  registration. 


SEC. 

81.  Rules    for   transfer   of  trade- 

marks. 

82.  Penalty  for   fraudulent  regis- 

tration. 

83.  Common    law    remedies    pre- 

served. 

84.  No  action  to  be  sustained  on 

fraudulent  or  deceptive  trade- 
marks. 


who  entitled  to     77.  Any  person  or  firm  domiciled  in  the 

trade-marks,          ••»/•»•« 

and  require- United  States,  and  any  corporation  created 

ments  concern-  7  "  *• 

ing  the  same,  by  the  authority  of  the  United  States,  or  of 
any  State  or  Territory  thereof,  and  any  per- 
son, firm,  or  Corporation  resident  or  located 
in  any  foreign  country  which  by  treaty  or 
convention  aifords  similar  privileges  to  citi- 
zens of  the  United  States,  and  who  are  enti- 
tled to  the  exclusive  use  of  any  lawful  trade- 
mark, or  who  intend  to  adopt  and  use  any 
trade-mark  for  exclusive  use  within  the 
United  States,  may  obtain  protection  for 
such  lawful  trade-mark  by  complying  with 
the  following  requirements,  to  wit: 


OF  THE  UNITED  STATES.  37 

First.  By  causing  to  be  recorded  in  the 
Patent  Office  the  names  of  the  parties  and 
their  residences  and  place  of  business  who 
desire  the  protection  of  the  trade-mark. 

Second.  The  class  of  merchandise  and  the 
particular  description  of  goods  comprised  in 
such  class,  by  which  the  trade-mark  has 
been  or  is  intended  to  be  appropriated. 

Third.  A ,  description  of  the  trade-mark 
itself,  with  fac  similes  thereof,  and  the  mode 
in  which  it  has  been  or  is  intended  to  be 
applied  and  used. 

Fourth.  The  length  of  time,  if  any,  dur- 
ing which  the  trade-mark  has  been  used. 

Fifth.  The  payment  of  a  fee  of  twenty- 
five  dollars,  in  the  same  manner  and  for  the 
same  purpose  as  the  fee  required  for  patents. 

Sixth.  The  compliance  with  such  regula- 
tions as  may  be  prescribed  by  the  Commis- 
sioner of  Patents. 

Seventh.  The  fi  ling  of  a  declaration,  under 
the  oath  of  the  person,  or  of  some  member 
of  the  firm  or  officer  of  the  corporation,  to 
the  effect  that  the  party  claiming  protection 
for  the  trade-mark  has  a  right  to  the  use  of 
the  same,  and  that  no  other  person,  firm,  or 
corporation  has  the  right  to  such  use,  either 
in  the  identical  form  or  having  such  near 
resemblance  thereto  as  might  be  calculated 
to  deceive,  and  that  the  description  and  fac 
similes  presented  for  record  are  true  copies 
of  the  trade-mark  sought  to  be  protected. 

4 


38  PATENT,  COPYRIGHT,  AND  TEADE-MARK  LAWS 

Term  for  which      78.  Such  trade-mark  shall  remain  in  force 

trade-marks 

shaii  remain  in  for  thirty  years  from  the  date  of  such  regis- 
tration, except  in  cases  where  such  trade- 
mark is  claimed  for  and  applied  to  articles 
not  manufactured  in  this  country,  and  in 
which  it  receives  protection  under  the  laws 
of  any  foreign  country  for  a  shorter  period, 
in  which  case  it  shall  cease  to  have  any  force 
in  this  country,  by  virtue  of  this  act,  at  the 
same  time  that  it  becomes  of  no  effect  else- 
where ;  and  during  the  period  that  it  remains 
in  force  it  shall  entitle  the  person,  firm,  or 
corporation  registering  the  same  to  the  ex- 
clusive use  thereof,  so  far  as  regards  the 
description  of  goods  to  which  it  is  appropri- 
ated in  the  statement  filed  under  oath  as 
aforesaid,  and  no  other  person  shall  lawfully 
use  the  same  trade-mark,  or  substantially  the 
same,  or  so  nearly  resembling  it  as  to  be  cal- 
culated to  deceive,  upon  substantially  the 
same  description  of  goods:  Provided,  That 
six  months  prior  to  the  expiration  of  said 
term  of  thirty  years  application  may  be  made 
for  a  renewal  of  such  registration,  under 
regulations  to  be  prescribed  by  the  Commis- 
sioner of  Patents,  and  the  fee  for  such  re- 
newal shall  be  the  same  as  for  the  original 
registration;  certificate  of  such  renewal  shall 
be  issued  in  the  same  manner  as  for  the  orig- 
inal registration,  and  such  trade-mark  shall 
remain  in  force  for  a  further  term  of  thirty 
years:  And  provided  further,  That  nothing  in 


OF  THE  UNITED  STATES.  39 

this  section  shall  be  construed  by  any  court 
as  abridging  or  in  any  manner  affecting  un- 
favorably the  claim  of  any  person,  firm,  cor- 
poration, or  company  to  any  trade-mark  after 
the  expiration  of  the  term  for  which  such 
trade-mark  was  registered. 

79.  Any  person  or  corporation  who  shall  Remedy    for 

<*    r  >  wrongful  use  of 

reproduce,  counterfeit,  copy,  or  imitate  any  trade-marks, 
such  recorded  trade-mark,  and  affix  the  same 
to  goods  of  substantially  the  same  descriptive 
properties  and  qualities  as  those  referred  to 
in  the  registration,  shall  be  liable  to  an  ac- 
tion on  the  case  for  damages  for  such  wrong- 
ful use  of  said  trade-mark,  at  the  suit  of  the 
owner  thereof,  in  any  court  of  competent 
jurisdiction  in  the  United  States,  and  the 
party  aggrieved  shall  also  have  his  remedy 
according  to  the  course  of  equity  to  enjoin 
the  wrongful  use  of  his  trade-mark  and  to 
recover  compensation  therefor  in  any  court 
having  jurisdiction  over  the  person  guilty  of 
such  wrongful  use.  The  Commissioner  of 
Patents  shall  not  receive  and  record  any  pro- 
posed trade-mark  which  is  not  and  cannot 
become  a  lawful  trade-mark,  or  which  is 
merely  the  name  of  a  person,  firm,  or  cor- 
poration only,  unaccompanied  by  a  mark  suf- 
ficient to  distinguish  it  from  the  same  name 
when  used  by  other  persons,  or  which  is 
identical  with  a  trade-mark  appropriate  to 
the  same  class  of  merchandise  and  belonging 
to  a  different  owner,  and  already  registered 


40  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

or  received  for  registration,  or  which  so 
nearly  resembles  such  last-mentioned  trade- 
mark as  to  be  likely  to  deceive  the  public : 
Provided,  That  this  section  shall  not  prevent 
the  registry  of  any  lawful  trade-mark  right- 
fully used  at  the  time  of  the  passage  of  this 
act. 

Proof  of  registra-  80.  The  time  of  the  receipt  of  any  trade- 
mark at  the  Patent  Office  for  registration 
shall  be  noted  arid  recorded,  and  copies  of 
the  trade-mark  and  of  the  date  of  the  receipt 
thereof,  and  of  the  statement  filed  therewith, 
under  the  seal  of  the  Patent  Office,  certified 
by  the  Commissioner,  shall  be  evidence  in 
any  suit  in  which  such  trade-mark  shall  be 
brought  in  controversy. 

Kuiesfortransfer     81.  The  Commissioner  of  Patents  is  au- 

of  trade-marks. 

thorized  to  make  rules,  regulations,  and  pre- 
scribe forms  for  the  transfer  of  the  right  to 
the  use  of  such  trade-marks,  conforming  as 
nearly  as  practicable  to  the  requirements  of 
law  respecting  the  transfer  and  transmission 
of  copyrights. 

Penalty  for  fraud-  82.  Any  person  who  shall  procure  the  the 
r  a"  registry  of  any  trade-mark,  or  of  himself  as 
the  owner  thereof,  or  an  entry  respecting  a 
trade-mark,  in  the  Patent  Office,  under  this 
act,  by  making  any  false  or  fraudulent  repre- 
sentations or  declarations,  verbally  or  in 
writing,  or  by  any  fraudulent  means,  shall 
be  liable  to  pay  damages,  in  consequence  of 
any  such  registry  or  entry,  to  the  person  in- 


OF  THE  UNITED  STATES. 


jured  thereby,  to  be  recovered  in  an  action 
on  the  case  before  any  court  of  competent 
jurisdiction  within  the  United  States. 

83.  Nothing  in  this  act  shall  prevent,  lessen,  c°e^™d°eg  ^ 
impeach,  or  avoid  any  remedy  at  law  or  in    8erved- 
equity,  which  any  party  aggrieved  by  any 
wrongful  use  of  any  trade-mark  might  have 

had  if  this  act  had  not  been  passed. 

84.  ISfo  action  shall  be  maintained  under  NO  action  to  be 

.-,  ..  ^>    .LI  •  LI  sustained  on 

the   provisions   of  this   act  by  any  person  fraudulent    or 

,    .      .  ,  ,  •    i  -  3        deceptive  trade- 

claiming  the  exclusive  right  to  any  trade-  marks.  • 

mark  which  is  used  or  claimed  in  any  unlaw- 
ful business,  or  upon  any  article  which  is 
injurious  in  itself,  or  upon  any  trade-mark 
which  has  been  fraudulently  obtained,  or 
which  has  been  formed  and  used  with  the 
design  of  deceiving  the  public  in  the  pur- 
chase or  use  of  any  article  of  merchandise. ' 

V.  Of  Copyrights. 


SEC. 

85.  Librarian  of  Congress  to  have 

charge  of  copyrights. 

86.  What  may  be  copyrighted. 

87.  Term  of  copyright. 

88.  Extension  of  copyright. 

89.  Assignment  of  copyrights  to  be 

recorded. 

90.  Recording  copyright;    duty  of 

applicant. 

91.  Recording  copyright;    duty  of 

Librarian. 

92.  Fees. 

93.  Library    of    Congress  to  have 

copyright  articles. 
4* 


SEC. 

94.  Penalty  for  not  delivering. 

95.  May  be  sent  to  Library  by  mail 

free. 

96.  Duty  of  postmaster  in  regard  to. 

97.  Notice  of  copyright. 

98.  Penalty  for  false  notice. 

99.  Infringement  of  copyrightbook. 

100.  Infringement  of  copyright  map, 

&c. 

101.  Infringement  of  copyright  dra- 

matic composition. 

102.  Infringement  of  manuscripts. 

103.  Foreign  works  may  be  printed 

or  imported. 


42 


PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 


SEC. 

104.  Limitation  of  time  of  action.    .. 

105.  Pleading. 

106.  Actions  cognisable  by  circuit 

court. 


SEO. 

107.  Appeals  to  Supreme  Court  U.  S. 

108.  Full  cost  to  be  allowed. 

109.  Transfer  of  books,  &c.,  to  Li- 

brary of  Congress. 


sa 


Shall  have  seal. 


Librarian  of  con-     85.  All  records  and  other  things  relating 

gross    to    have  .  .111  i 

charge  of  copy-  to  copyrights,  and  required  by  law  to  be  pre- 
b  Fob  1859  eh  8erve^>  shall  be  under  the  control  of  the  Li- 
'v'  n>>  pp<brarian  of  Congress,  and  kept  and  preserved 
in  the  Library  of  Congress;  and  the  Libra- 
rian of  Congress  shall  have  the  immediate 
care  and  supervision  thereof,  and,  under  the 
supervision  of  the  Joint  Committee  of  Con- 
gress on  the  Library,  shall  perform  all  acts 
and  duties  required  bylaw  touching  copy- 
rights. The  Librarian  shall  cause  a  seal  to 
be  provided  for  said  office,  with  such  device 
as  the  Joint  Committee  on  the  Library  may 
approve,  with  which  all  records  or  papers 
issued  from  said  office,  and  to  be  used  in 
evidence,  shall  be  authenticated.  He  shall 
also  give  an  additional  bond,  with  sureties, 
to  the  Treasurer  of  the  United  States,  in  the 
sum  of  five  thousand  dollars,  with  the  con- 
dition that  he  will  render  to  the  proper 
officers  of  the  treasury  a  true  account  of  all 
moneys  received  by  virtue  of  his  office.  He 
And  make  annual  shall  also  make  an  annual  report  to  Congress  . 
of  the  number  and  description  of  copyright 
publications  for  which  entries  have  been 
made  during  the  year.  And  the  Librarian 
of  Congress  shall  receive  a  yearly  compensa- 


Give  bond. 


report. 


OF  THE  UNITED  STATES.  43 

tion  of  four  thousand  dollars,  to  commence 
when  this  act  shall  take  effect. 
86.  Any  citizen  of  the  United  States,  or  what   may    be 

copyrighted 

resident  therein,  who  shall  be  the  author,  in-  3Feb  1831  f.h 
ventor,  designer,  or  proprietor  of  any  book,  1C^|  l<^£>  P-J™- 
map,  chart,  dramatic  or  musical  composi-^ \^^  T-11' 
tion,  engraving,  cut,  print,  or  photograph  or12*l|ajj'*f^c^; 

negative  thereof,  or  of  a  painting,  drawing,^!: 

chromo,  statue,  statuary,  and  of  models  or   u  HOW.,  530. 
designs  intended  to  be  perfected  as  works  of    i  Btaabt/aeiJ 
the  fine  arts,  and  his  executors,  administra-    3  story!  778. 

.  ,      ,,  .   ,       4  McLean,  316, 

tors,  or  assigns,  shall,  upon  complying  with  517. 
'          ' 


the  provisions  of  this  act,  have  the  sole  lib-    2  wood.  A  Mm, 
erty  of  printing,  reprinting,  publishing,  com-  ^  ^atchf  •  46> 
pleting,  copying,  executing,  finishing,  and    2Paine,383. 
vending  the  same;  and  in  the  case  of  a  dra- 
matic composition,  of  publicly  performing  or 
representing  it,  or  causing  it  to  be  performed 
or  represented  by  others;  and  authors  may 
reserve  the  right  to  dramatize  or  to  translate 
their  own  works. 

87.  Copyrights  shall  be  granted  for  the  Term  of  copy- 
term  of  twenty-eight  years  from  the  time  of 


.          ,  3  Feb.,  1831,  cb. 

recording  the  title  thereof,  in  the  manner  16>  2  *•  v-  *•  P-  43G- 
hereinafter  directed. 

88.  The  author,  inventor,  or  designer,  if    Extension  of 

.  copyright. 

he  be  still  living  and  a  citizen  of  the  United   3Feb  ]831  ch 

' 


States  or  resident  therein,  or  his  widow  orJMy,  v-4pp- 
children,  if  he  be  dead,  shall  have  the  same  2  Wood  A  Min  ( 
exclusive  right  continued  for  the  further 
term  of  fourteen  years,  upon  recording  the 
title  of  the  work  or  description  of  the  article 


44  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

BO  secured  a  second  time,  and  complying 
with  all  other  regulations  in  regard  to  orig- 
inal copyrights,  within  six  months  before  the 
expiration  of  the  first  term.  And  such  per- 
son shall,  within  two  months  from  the  date 
of  said  renewal,  cause  a  copy  of  the  record 
thereof  to  be  published  in  one  or  more  news- 
papers, printed  in  the  United  States,  for  the 
space  of  four  weeks. 
Assignment  of  89.  Copyrights  shall  be  assignable  in  law 

copyrights     to.  .  ,,         .   .  .,  - 

be  recorded,    by  any  instrument  of  writing,  and  such  as- 
3ojune,i834ch.siffnment  shall  be  recorded  in  the  office  of 

157,gl,v.4,p.728.      => 

8  wend  565 — ^6  Librarian  of  Congress  within  sixty  days 

42?5u>?od:&  *Iin" after  its  execution,  in  default  of  which  it  shall 

s  Potfcoi! 41*    ^e  V°i^  as  againgt  any  subsequent  purchaser 

is  HOW.,  171.     Qr  mortgagee  for  a  valuable  consideration, 

without  notice. 

Recording  copy-  90.  No  person  shall  be  entitled  to  a  copy- 
apgpiicant! y  °  right  unless  he  shall,  before  publication, 
3  Fob.,  1831,  ch.  deposit  in  the  mail  a  printed  copy  of  the 

1C,  g  4,  V.  4,  p.  437.        L 

2Biatchf  83  ^e  °f  *ke  k°°k  or  other  article,  or  a  de- 
5McLe£m',m  scription  of  the  painting,  drawing,  chromo, 
statue,  statuary,  or  model  or  design  for  a 
work  of  the  fine  arts,  for  which  he  desires 
a  copyright,  addressed  to  the  Librarian  of 
Congress,  and,  within  ten  days  from  the  pub- 
lication thereof,  deposit  in  the  mail  two  copies 
of  such  copyright  book  or  other  article,  or, 
in  case  of  a  painting,  drawing,  statue,  statu- 
ary, model  or  design  for  a  work  of  the  fine 
arts,  a  photograph  of  the  same,  to  be  ad- 


OF  THE  UNITED  STATES.  45 

dressed  to  said  Librarian  of  Congress,  as 
hereinafter  to  be  provided. 

91.  The  Librarian  of  Congress  shall  re-  Recording  copy- 

.    ,        ,         ,  right;   duty  of 

cord  the  name  or  such  copyright  book,  or    Librarian. 
other  article,  forthwith  in  a  book  to  be  kept,  AF,fb-'  i831',0.-' 

1     1G,  g  4,  v.  4,  p.  4^,1. 

for  that  purpose,  in  the  words  following: 
"Library  of  Congress,  to  wit:  Be  it  remem- 
bered that  on  the  -  day  of  -  ,  anno 
Domini  -  ,  A.  B.,  of  -  ,  hath  depos- 
ited in  this  office  the  title  of  a  book,  (map, 
chart,  or  otherwise,  as  the  case  may  be,  or 
description  of  the  article,)  the  title  or  descrip- 
tion of  which  is  in  the  following  words,  to 
wit  :  (here  insert  the  title  or  description,)  the 
right  whereof  he  claims  as  author,  origin- 
ator, (or  proprietor,  as  the  case  may  be,)  in 
conformity  with  the  laws  of  the  United  States 
respecting  copyrights.  C.  D.,  Librarian  of 
Congress."  And  he  shall  give  a  copy  of  the 
title  or  description,  under  the  seal  of  the  Li- 
brarian of  Congress,  to  said  proprietor,  when- 
ever he  shall  require  it. 

92.  For  recording  the  title  or  description        Fees. 


of  any  copyright  book  or  other  article,  the    a  Feb..  mi,  ch. 

*          r>/      °  16.  §4,  v.  4,  p.  437. 

Librarian  of  Congress  shall   receive,  from  Ch3()1..^  u,n|  V  4834' 
the  person  claiming  the  same,  fifty  cents  ;  7i!|.  Fe'b  ^  ^h 
and  for  every  copy  under  seal  actually  given80-  2  I.V.IO.P.  ica. 
to  such  person  or  his  assigns,  fifty  cents: 
and  for  recording  any  instrument  of  writing 
for  the  assignment  of  a  copyright,  fifteen 
cents  for  every  one  hundred  words;  and  for 
every  copy  thereof,  ten  cents  for  every  one 


46  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

hundred  words,  which  moneys,  so  received, 
shall  be  paid  into  the  Treasury  of  the  United 
States. 
Library  of  Con-     93.  The    proprietor    of   every    copvright 

gress   to   have  •"-       -1  "  L  *      ° 

copyright  arti-  book  or  other  article  shall  mail  to  the  Libra- 

cles. 

3  Mar  i860,  ch.  r^an  °^  Congress  at  Washington,  within  ten 
ppG'54o,  MI.'  v' 13>  days    after    its    publication,   two   complete 
ch.843,^ v.  I*,6?'  Prmted  copies  thereof,  of  the  best  edition 
issued,  or  description  or  photograph  of  such 
article  as  hereinbefore  required,  and  a  copy 
of  every  subsequent  edition  wherein  any  sub- 
stantial changes  shall  be  made. 

Penalty  for  not     94.  In  default  of  such  deposit  in  the  post 
—  office,  said  proprietor  shall  be  liable  to  a 

18    Feb.,    1867, 

chg.  43,  §i,v. u,  p.  penaity  of  twenty-five  dollars,  to  be  collected 
by  the  Librarian  of  Congress,  in  the  name 
of  the  United  States,  in  an  action  of  debt, 
in  any  district  court  of  the  United  States 
within  the  jurisdiction  of  which  the  delin- 
quent may  reside  or  be  found. 

May  be  sent  to     95.  Any  such   copyright  book  or   other 

Library  by  mail  J  rj      t=> 

free. article  may  be  sent  .to  the  Librarian  of  Con- 

ifp'g1'688  by  mail,  free  of  postage,  provided  the 
words  "Copyright  matter"  are  plainly  writ- 
ten or  printed  on  the  outside  of  the  package 
containing  the  same. 
Duty  of  postmas-     96.  The  postmaster  to  whom  such  copy- 

ter  in  regard  to.  ,        .  i  ,  .,.,,.  , 

•  lg   Feb — —  right  book,  title,  or  other  article  is  delivered 

3^- 43>?2>v-u'p' shall,  if  requested,  give  a  receipt  therefor; 

and,  when  so  delivered,  he  shall  mail  it  to  its 

destination  without  cost  to  the  proprietor. 

Noticerighft. copy"     97.  No  person  shall  maintain  an  action  for 


OF  THE  UNITED  STATES.  47 

the  infringement  of  his  copyright  unless  he3Feb.,i83i,^h. 
shall  give  notice  thereof,  hy  inserting  in  the  ^  Biltch£,  620. 
several  copies  of  every  edition  published,  on 
the  title-page  or  the  page  immediately  fol- 
lowing, if  it  be  a  book;  or,  if  a  map,  chart, 
musical  composition,  print,  cut,  engraving, 
photograph,  painting,  drawing,  chromo, 
statue,  statuary,  or  model  or  design  intended 
to  be  perfected  and  completed  as  a  work  of 
the  fine  arts,  by  inscribing  upon  some  por- 
tion of  the  face  or  front  thereof,  or  on  the 
face  of  the  substance  on  which  the  same 
shall  be  mounted,  the  following  words,  viz: 
"Entered  according  to  act  of  Congress,  in 

the  year ,  by  A.  B.,  in  the  office  of  the 

Librarian  of  Congress,  at  Washington." 

98.  If  any  person  shall  insert  or  impress  Penalty  for  false 
such  notice,  or  words  of  the  same  purport, — 

in  or  upon  any  book,  map,  chart,  musical  ie,  gn,v.4,P.'448. 
composition,  print,  cut,  engraving,  or  pho-    i  Biatchf.,  154. 
tograph,  or  other  articles  herein  named,  for 
which  he  has  not  obtained  a  copyright,  every 
person  so  offending  shall  forfeit  and  pay  one 
hundred  dollars;  one  moiety  thereof  to  the 
person  who  shall  sue  for  the  same,  and  the 
other  to  the  use  of  the  United  States,  to  be 
recovered  by  action  in  any  court  of  compe- 
tent jurisdiction. 

99.  If  any  person,  after  the  recording  of  infringement  of 

,-,,.,,        r  11  i_          •  -j    j      i      n     copyright  book. 

the  title  oi  any  book  as  herein  provided,  shall  - 

J  *  3  Feb.,  1831,  eh. 

within  the  term  limited,  and  without  the]M6,v.4,Pp.437, 
consent  of  the  proprietor  of  the  copyright,  ~~i  story,  19. 


48  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 


2SB°iatehf5'  47  ^Fst  obtained  in  writing,  signed  in  presence 

85i  McLean  315   °^  two  or  more  witnesses,  print,  publish,  or 

7  Howh'8ii°'     imPor^  or»  knowing  the  same  to  be  so  printed, 

published,  or  imported,  shall  sell  or  expose 

to  sale  any  copy  of  such  book,  such  offend- 

er shall  forfeit   every  copy  thereof  to  said 

proprietor,  and  shall  also  forfeit  and  pay  such 

damages  as  may  be  recovered  in  a  civil  action 

by  such  proprietor  in  any  court  of  compe- 

tent jurisdiction. 

infringement  of     100.  If  any  person,  after  the  recording  of 

copyright  map,  *    r 

&c-  _  the  title  of  any  map,  chart,  musical  composi- 
iefgF7?  v.'4,8p!'4C38!  ti°n5  Prmt>  cut>  engraving,  or  photograph,  or 

1  story,  is.       chromo,  or  of  the  description  of  any  paint- 
is  Biatchf!  ,47.    ing,  drawing,  statue,  statuary,  or  model  or 

2  wood.  &  Mm.,  design  intended  to  be  perfected  and  executed 
4'  McLean,  301,  as  a  work  of  the  fine  arts,  as  herein  provided, 

309 

shall,  within  the  term  limited,  and  without 
the  consent  of  the  proprietor  of  the  copy- 
right first  obtained  in  writing,  signed  in 
presence  of  two  or  more  witnesses,  engrave, 
etch,  work,  copy,  print,  publish,  or  import, 
either  in  whole  or  in  part,  or  by  varying  the 
main  design  with  intent  to  evade  the  law,  or, 
knowing  the  same  to  be  so  printed,  pub- 
lished, or  imported,  shall  sell  or  expose  to  sale 
any  copy  of  such  map  or  other  articl  e,  as  afore- 
said, he  shall  forfeit  to  the  said  proprietor  all 
the  plates  on  which  the  same  shall  be  copied, 
and  every  sheet  thereof,  either  copied  or 
printed,  and"  shall  further  forfeit  one  dol- 
lar for  every  sheet  of  the  same  found  in  his 


OF  THE  UNITED  STATES.  49 

possession,  either  printing,  printed,  copied, 
published,  imported,  or  exposed  for  sale; 
and  in  case  of  a  painting,  statue,  or  statuary, 
lie  shall  forfeit  ten  dollars  for  every  copy  of 
the  same  in  his  posession,  or  which  have  by 
him  been  sold  or  exposed  for  sale;  one 
moiety  thereof  to  the  proprietor  and  the 
other  to  the  use  of  the  United  States,  to  be 
recovered  by  action  in  any  court  of  compe- 
tent jurisdiction. 

101.  Any  person  publicly  performing  or  infringement  of 

J  J     r  .          °  copyright   dra- 

representmg  any  dramatic  composition  for    matte  composi- 
which  a  copyright  has  been  obtained,  with-    18  Au — ^^ 
out  the  consent  of  the  proprietor  thereof,  or££- i^y,  v-n' 
his  heirs  or  assigns,  shall  be  liable  for  dam- 
ages therefor,  to  be  recovered  by  action  in 
any  court  of  competent  jurisdiction;    said 
damages  in  all  cases  to  be  assessed  at  such 
sum,  not  less  than  one  hundred  dollars  for 
the  first,  and  fifty  dollars  for  every  subse- 
quent performance,  as  to  the  court  shall  ap- 
pear to  be  just. 

102.  Any  person  who  shall  print  or  pub-  infringement  of 

.  ,  •  i  i          manuscripts. 

lish  any  manuscript  whatever,  without  the  — 

'  *  \  3  Feb.,  1831,  ch. 

consent  of  the  author  or  proprietor  first  ob-1G'2-J>v-4>  p-43*- 

5    McLean,   41, 

tained,  (if  such  author  or  proprietor  be  a  cit-33|2How  Pr  ^ 
izen  of  the  United  States  or  resident  therein,)    I  ^Lean  301. 
shall  be  liable  to  said  author  or  proprietor 
for  all  damages  occasioned  by  such  injury, 
to  be  recovered  by  action  on  the  case  in  any 
court  of  competent  jurisdiction. 

103.  Nothing  herein  contained  shall  be  Foreign    works 

5 


50  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

may  be  printed  construed   to  prohibit  the   printing,  publish- 
er imported.      .  5  '.  .J 
3  Feb.,  1831,  eh.  ing>  importation,  or  sale  of  any  book,  map, 
IB, g  8,  v.' K, p.' 438.  chart,  dramatic  or  musical  composition,  print, 
cut,  engraving,  or  photograph,  written,  com- 
posed, or  made  by  any  person  not  a  citizen 
of  the  United  States  nor  resident  therein. 
Limitation  of      104.  !N"o  action  shall  be  maintained  in  any 

— Feb  1 31  eh  cas<3  °^  f°rfeiture  or  penalty  under  the  copy- 
i6,§i3,v'.4,p.'439.  right  laws  unless  the  same  is  commenced 
within  two  years  after  the  cause  of  action 
has  arisen. 

Pleading.          105.  In  all  actions  arising  under  the  laws 
3  Feb.,  issi,  ch.  respecting:   copyrights   the   defendant    may 

16,  §  10,  V.  4,  p.  438.          ^  &  *V      «  ^  fJ 

plead  the  general  issue,  and  give  the  special 
matter  in  evidence. 
Actions  cogniza-     106.  All  actions,  suits,  controversies,  and 

ble    by    circuit  .    .  ,  ,  .    ,      ,  „    , 

court.  cases  arising  under  the  copyright  laws  of  the 

15  Feb.,  1819,  United  States  shall  be  originally  cognizable, 

ch.  19,  §  1,  v.  3,  p.  J         & 

48i. as  well  in  equity  as  at  law,  whether  civil  or 

^5  McLean,  ss,  penal  in  their  nature,  by  the  circuit  courts 

272Wood.&Min.,of  the  United  States,  or  any  district  court 

nliow^ljf01'  having  the  jurisdiction  of  a  circuit  court,  or 

4Duer,'382.        in  the  8Upreme  court  Qf  tne    District  of   Co- 

lumbia,  or  any  Territory.  And  the  court 
shall  have  power,  upon  bill  in  equity  filed 
by  any  party  aggrieved,  to  grant  injunctions 
to  prevent  the  violation  of  any  right  secured 
by  said  laws,  according  to  the  course  and 
principles  of  courts  of  equity,  on  such  terms 
as  the  court  may  deem  reasonable. 

Appeals   to  Su-     107.  A  writ  of  error  or  appeal  to  the  Su- 
urniTed  states. 'preme  Court  of  the  United  States  shall  lie 


OP  THE  UNITED  STATES.  51 

from  all  judgments  and  decrees  of  any  court,    w  Fet>.^  wei, 
in  any  action,  suit,  controversy,  or  case  touch- 130. 
ing  copyrights,  in   the   same  manner  and 
under  the  same  circumstances  as  in  other 
judgments  and  decrees  of  such  courts,  with- 
out regard  to  the  sum  or  value  in  contro- 
versy. 

108.  In  all  recoveries  under  the  copyright Ful1  a^*e^°  be 
laws,  either  for  damages,  forfeitures,  or  pen-   3  Feb ^  1831)  ch 
alties,  full  costs  shall  be  allowed  thereon.      g^S  T<  4>  pp* 

109.  All  books,  maps,  charts,  and  other  Transfer   of 

„  ,  books,  Ac.,    to 

publications,  of  every  nature  whatever,  here-  Library  of  con- 
tofore  deposited  in  the  Department  of  the 
Interior,  according  to  the  laws  regulating 
copyrights,  together  with  all  the  records  of 
said  department,  and  all  records  concerning 
the  same  which  were  removed  by  the  De- 
partment of  the  Interior  from  the  Depart- 
ment of  State,  shall  be  removed  to  and  be 
under  the  control  of  the  Librarian  of  Con- 
gress, who  is  hereby  charged  with  all  the 
duties  pertaining  to  copyrights  required  by 
law. 

110.  The  clerk  of  each  of  the  district  courts 
of  the  United  States  shall  transmit  forthwith 
to  the  Librarian  of  Congress  all  books,  maps, 
prints,  photograp[h]s,  music,  and  other  pub- 
lications, of  every  nature  whatever,  deposited 
in  the  said  clerk's  office,  and  not  heretofore 
sent  to  the  Department  of  the  Interior,  at 
Washington,  together  with  all  records  of 
copyright  in  his  possession,  including  the 


52  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

titles  so  recorded,  and  the  dates  of  record: 
Provided,  That  where  there  are  duplicate 
copies  of  legal,  scientific,  or  mechanical 
works,  one  copy  of  each  may  be  deposited 
in  the  library  of  the  Patent  Office,  for  which 
a  receipt  shall  be  given  by  the  Commis- 
sioner of  Patents  to  the  Librarian  of  Con- 
gress. 

VI.  Repealing  Clause  and  Schedule. 

111.  Repeal  and  its  effect. 

Repeal  and  its     111.  The  acts  and  parts  of  acts  set  forth 

effect. 

in  the  schedule  of  acts  cited,  hereto  annexed, 
are  hereby  repealed,  without  reviving  any 
acts  or  parts  of  acts  repealed  by  any  of  said 
acts,  or  by  any  clause  or  provisions  therein : 
Provided,  however,  That  the  repeal  hereby  en- 
acted, shall  not  affect,  impair,  or  take  away 
any  right  existing  under  any  of  said  laws; 
but  all  actions  and  causes  of  action,  both  in 
law  and  in  equity,  which  have  arisen  under 
any  of  said  laws,  may  be  commenced  and 
prosecuted,  and,  if  already  commenced,  may 
be  prosecuted  to  final  judgment  and  execu- 
tion in  the  same  manner  as  though  this  act 
had  not  been  passed,  excepting  that  the  re- 
medial provisions  of  this  act  shall  be  appli- 
cable to  all  suits  and  proceedings  hereafter 
commenced :  And  provided  also,  That  all  ap- 
plications for  patents  pending  at  the  time  of 
the  passage  of  this  act,  in  cases  where  the 


OF  THE  UNITED  STATES.  53 

duty  lias  been  paid,  shall  be  proceeded  with 
and  acted  on  in  the  same  manner  as  though 
filed  after  the  passage  thereof:  And  provided 
further.  That  all  offenses  which  are  defined 
and  punishable  under  any  of  said  acts,  and 
all  penalties  and  forfeitures  created  thereby 
and  incurred  before  this  act  takes  effect,  may 
be  prosecuted,  sued  for,  and  recovered,  and 
such  offenses  punished,  according  to  the  pro- 
visions of  said  acts,  which  are  continued  in 

force  for  such  purpose. 

• 

Schedule  of  statutes  cited  and  repealed,  as  printed 
in  the  Statutes  at  Large,  including  such  por- 
tions only  of  the  appropriation  bills  referred  to 
as  are  applicable  to  the  Patent  Office. 

PATENTS. 

Act  of  July  4,  1836,  chapter  357,  volume 
5,  page  117. 

Act  of  March  3, 1837,  chapter  45,  volume 
5,  page  191. 

Act  of  March  3,  1839,  chapter  88,  volume 
5,  page  353. 

Act  of  August  29,  1842,  chapter  263,  vol- 
ume 5,  page  543. 

Act  of  August  6,  1846,  chapter  90,  vol- 
ume 9,  page  59. 

Act  of  May  27,  1848,  chapter  47,  volume 
9,  page  231. 

Act  of  March  3,  1849,  chapter  108,  vol- 
ume 9,  page  395. 
5* 


54  PATENT,  COPYRIGHT,  AND  TRADE-MARK  LAWS 

Act  of  March  3,  1851,  chapter  32,  volume 

9,  page  617. 

Act  of  August  30,  1852,  chapter  107,  vol- 
ume 10,  page  75. 

Act  of  August  31, 1852,  chapter  108,  vol- 
ume 10,  page  76. 

Act  of  March  3,  1853,  chapter  97,  volume 

10,  page  209. 

Act  of  April  22,  1854,  chapter  52,  volume 
10,  page  276. 
Act  of  March  3, 1855,  chapter  175,  volume 

10,  page  643. 

Act  of  August  18, 1856,  chapter  129,  vol- 
ume 11,  page  81. 

Act  of  March  3,  1859,  chapter  80,  volume 

11,  page  410. 

Act  of  February  18, 1861,  chapter  37,  vol- 
ume 12,  page  130. 

Act  of  March  2,  1861,  chapter  88,  volume 

12,  page  246. 

Act  of  March  3,  1863,  chapter  102,  vol- 
ume 12,  page  796. 

Act  of  June  25, 1864,  chapter  159,  volume 

13,  page  194. 

Act  of  March  3, 1865,  chapter  112,  volume 

13,  page  533. 

Act  of  June  27, 1866,  chapter  143,  volume 

14,  page  76. 

Act  of  March  29, 1867,  chapter  17,  volume 

15,  page  10. 

Act  of  July  20, 1868,  chapter  177,  volume 
15,  page  119. 


OF  THE  UNITED  STATES.  55 

Act  of  July  23,  1868,  chapter  227,  volume 
15,  page  168. 

Act  of  March  3, 1869,  chapter  121,  volume 
15,  page  293. 

COPYRIGHTS. 

Act  of  February  15,  1819,  chapter  19,  vol- 
ume 3,  page  481. 

Act  of  February  3,  1831,  chapter  16,  vol- 
ume 4,  page  436. 

Act  of  June  30, 1834,  chapter  157,  volume 
4,  page  728. 

Act  of  August  18, 1856,  chapter  169,  vol 
ume  11,  page  138. 

Act  of  February  5,  1859,  chapter  22,  vol- 
ume 11,  page  380. 

Act  of  February  18,  1861,  chapter  37,  vol- 
ume 12,  page  130. 

Act  of  March  3, 1865,  chapter  126,  volume 
13,  page  540. 

Act  of  February  18,  1867,  chapter  43,  vol- 
ume 14,  page  395. 

Approved  July  8, 1870. 


II. 


SYIDTOIPSIS 

OF   THE 

LAWS  AND  PRACTICE  OF  LETTERS  PATENT 


FOE  INVENTION 


THE  PEINCIPAL  FOBEIGN  STATES. 


67 


SYNOPSIS  OF  THE  LAWS  OF  LETTERS  PATENT 


FOE  INVENTION 


THE  PRINCIPAL  FOREIGN  STATES. 


I.  The  Argentine  Republic. 


SEC. 

1.  Law  and  date. 

2.  Kinds  of  patents. 

3.  Previous  examination. 

4.  Duration. 

5.  Government  fees. 

6.  Documents  required. 


SEC. 

7.  Working. 

8.  Assignment. 

9.  Specifications,    &c.,   inspection 

and  publication  of. 

10.  Infringements. 

11.  Other  legal  provisions. 


1.  LAW  AND  DATE. — 28th  September,  1864.     Promul- 
gated llth  October,  1864.     (See  Commissioners  of  Patents' 
Journal,  [vide  infra,  §  71,]  Nos.  1393,  1394,  and  1453, 
An.,  1867.) 

2.  KINDS  OF  PATENTS. — Patents  of  inventions  granted 
to  inventors  or  their  assignees.     Reissue  of  foreign  pat- 
ents.    Certificates  of  addition  or  improvement.     Provis- 
ional patents. 

3.  PREVIOUS  EXAMINATION. — By  the  sub-commission- 
ers.    The  following  are  not  patentable :  Pharmaceutical 
compositions;  financial  schemes;  discoveries  or  inven- 
tions known  or  published  abroad,  or  in  the  Republic; 
theoretical  schemes;  and  inventions  contrary  to  morals 
and  to  law. 

4.  DURATION. — Patents  of  inventions,  five,  ten,  or  fif- 
teen years.     Reissues  of  foreign  patents  limited  to  ten 

59 


60  FOREIGN  PATENT  LAWS. 

years,  and  never  to  exceed  the  term  of  the  original  for- 
eign patent.  Provisional  patents  one  year,  and  renew- 
able each  subsequent  year. 

5.  GOVERNMENT  FEES. — According  to  article  26  of  the 
patent  regulations,  a  stamp  duty  of  twenty-five  pesos 
(dollars)  for  the  letters  patent,  and  by  yearly  installments ; 
eight  pesos  for  patents  of  five  years;  ten  pesos  for  patents 
of  ten  years;   and  for  patents  of  fifteen   years  eleven 
pesos  during  the  first  five  years,  and  twelve  pesos  during 
the  remaining  ten  years.     According  to  article  6  of  the 
patent  law,  eighty  pesos  fuertes   for  a  patent  of  five 
years;  two  hundred  pesos  for  a  patent  often  years;  and 
three  hundred  and  fifty  pesos  for  a  patent  of  fifteen  years, 
one  half  to  be  paid  at  the  time  of  application,  and  the 
other  half  by  successive  yearly  installments.     Patentees 
to  accept  and  sign  bills  in  common  with  another  person 
(to  be  approved  of  by  the  commissioner)  as  collateral* 
security  for  the  payment  of  the  annual  installments.   Cer- 
tificates of  addition  subject  to  the  same  formalities  as 
patents,  original  patentees  paying  only  one  fourth  of  the 
patent  fees,  but  others  than  the  patentee  one  half.     Pro- 
visional patents  fifty  pesos,  to  be  deducted  in  case  letters 
patent  or  certificates  of  addition  for  said  invention  are 
taken  out  subsequently. 

6.  DOCUMENTS   REQUIRED. — A  petition   to   the  Com- 
missioner of  Patents,  (twenty-five  pesos  stamp  duty,)  a 
description,  (in  the  Spanish  language,)  with  proper  draw- 
ings on  a  metrical  scale,  patterns,  (models  or  chemical 
samples,)  all  in  duplicate,  and  a  list  of  the  objects  present- 
ed.    A  deposit  of  one  half  of  the  Government  fees,  one 
half  only  of  which  is  returned  in  case  of  refusal ;  and  when, 
in  the  latter  case,  an  appeal  is  made  to  the  Minister  of 


AUSTRIA.  61 

the  Interior,  (within  ten  days,)  and  the  refusal  is  upheld 
by  him,  the  whole  deposit  becomes  forfeited. 

7.  WORKING. — Within  two  years,  and  not  to  be  inter- 
rupted for  the   same  period,  except  by  showing  good 
cause  for  delay. 

8.  ASSIGNMENT. — By  notarial  act  of  registration  at  the 
Patent  Office.     Payment  of  the  entire  fees  required. 

9.  SPECIFICATIONS,  ETC.,  INSPECTION  AND  PUBLICATION 
OF. — Open  to  public  inspection  at  the  Patent  Office,  (ex- 
cept provisional   patents.)     Published  yearly.     Copies 
obtained  by  paying  the  stamp  duty  on  paper. 

10.  INFRINGEMENTS. — Punishable   by  a  fine  of  from 
fifty  to  five  hundred  pesos,  or  by  imprisonment  of  from 
one  to  six  months,  and  the  forfeiture  of  the  counterfeit 
articles,  besides  damages.     Participators  subject  to  the 
same  penalty.     In  case  of  a  second  oifense  within  five 
years,  said  penalty  to   be   doubled.     All  fines  to   be 
divided  between  the  treasury  and  the  informers. 

11.  OTHER  LEGAL  PROVISIONS. — Patent  actions  to  be 
instituted  by  the  interested  parties  before  the  sectional 
tribunals.     Decisions  summary.     Longest  term  granted 
for  showing  cause,  (in  exceptional  cases,)  six  months. 
Within  ten  days  of  the  expiration  of  the  term  allowed, 
judge  to  deliver  judgment  and  to  award  costs.     Appeals 
to  the  superior  court  (for  final  decision)  to  be  entered 
within  three  days. 

II.  Austria. 


SEC. 

12.  Law,  date,  and  where  recorded. 

13.  Kinds  of  patents. 

14.  Previous  examination. 

15.  Duration. 

6 


SEC. 

16.  Government  fees. 

17.  Documents  required,  and  where 

to  be  left. 

18.  Working  and  prolongation. 


62 


FOREIGN  PATENT  LAWS. 


SEC. 

19.  Assignments. 

20.  Other  legal  provisions. 

21.  Specifications,  inspection,  copies. 


SEC. 

22.  List  of  patents  delivered. 

23.  Specifications  published. 

24.  Proceedings  to  obtain  a  patent. 


12.  LAW,  DATE,  AND  WHERE  RECORDED. — Imperial  de- 
cree of  15th  August,  1852.     (See  Commissioners  of  Pat- 
ents' Journal,  [vide  infra,  §  71,]  !No.  291,  An.,  1856.) 

13.  KINDS  OF  PATENTS. — Exclusive  privileges  for  new 
discoveries,  inventions,  or  improvements  granted  to  na- 
tives or  foreigners  residing  or  represented  in  Austria. 

14.  PREVIOUS  EXAMINATION. — None  as  to  novelty  or 
utility.     Wo  guaranty  by  the  Government.     ISTo  patents 
are   granted  for  preparations  of  food,  beverages,  and 
medicines,  or  for  such  inventions  as  cannot  be  worked 
for  reasons  of  public  health,  morals,  or  safety,  or  as 
being  contrary  to  the  general  interest  of  the  State. 

15.  DURATION. — Fifteen  years  at  most  from  the  date 
of  the  exclusive  privilege.     Imported  inventions  for  the 
unexpired  term  of  the  foreign  patent.     The  latter  grants 
are  made  to  the  foreign  patentee  only,  or  his  proxy,  pro- 
vided the  invention  has  not  yet  been  worked  in  the 
empire. 

16.  GOVERNMENT  FEES. — Twenty  florins  for  each  of 
the  first  five  years;  thirty  florins  sixth ^year;  thirty-five 
florins  seventh  year;  forty  florins  eighth  year;  forty-five 
florins  ninth  year;  fifty  florins  tenth  year;  sixty  florins 
eleventh  year;  seventy  florins  twelfth  year;  eighty  flor- 
ins thirteenth  year;  ninety  florins  fourteenth  year;  one 
hundred  florins  fifteenth  year — equals   seven   hundred 
florins  for  fifteen  years,  or  one  hundred  florins  for  the 
first  five  years,  two  hundred  florins  for  the  following  five 
years,  and  four  hundred  florins  for  the  last  five  years. 


AUSTRIA.  63 

(Ten  florins  equal  one  pound.)  The  fees  paid  for  pat- 
ents, which  subsequently  have  been  annulled  on  public 
grounds,  are  to  be  repaid  in  proportion  to  the  unex- 
pired  term. 

17.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — A 
petition  of  the  inventor  or  his  proxy;  power  of  attorney, 
(in  the  latter  case;)  the  Government  fees  or  receipt  for 
the  same;  a  specification,  sealed,  and  in  German,  or  the 
language  of  the  respective  State  of  the  empire;  draw- 
ings, models,  or  patterns;  statement  whether  the  inven- 
tion is  to  be  kept  secret  or  n<-£  and,  if  the  former,  for 
how  long.     In  the  case  of  importations,  the  original 
letters  patent  or  an  authenticated  copy  of  the  same.     De- 
posited at  the  offices  of  the  governors  of  provinces  or 
of  the  authorities  of  districts.     Specifications  may  be 
amended. 

18.  WORKING    AND    PROLONGATION. — To    be   worked 
within  one  year,  and  not  to  be  interrupted  for  two  years. 
The  longest  term  extended  by  special  grant  of  the  Em- 
peror. 

19.  ASSIGNMENTS. — Registered  at  the  Ministry  of  Com- 
merce and  Trades,  and  published  in  the  Vienna  Gazette, 
monthly. 

20.  OTHER  LEGAL  PROVISIONS. — The  following  cases 
are  to  be  considered  as  infringements:  1.  Imitating  the 
object  of  a  patent;  2.  Importing  counterfeit  articles;  3. 
Selling  such  counterfeit  articles.     Infringements  of  pat- 
ents with  specifications  kept  secret  not  punishable  in 
the  first  instance.     Fines,  which  are  to  be  paid  into  the 
poor-box,  from  fifty  shillings  to  one  hundred  pounds. 
Imprisonment  at  the  rate  of  one  day  for  ten  shillings. 

21.  SPECIFICATIONS,  INSPECTION,  AND  COPIES  OF. — In  the 


64  FOREIGN  PATENT  LAWS. 

record  office  of  patents,  at  the  Ministry  of  Commerce 
and  Trades,  Vienna.  Copies  to  be  had  of  specifications 
which  are  not  to  be  kept  secret  or  which  belong  to  an 
extinct  patent. 

22.  LIST  OF  PATENTS  DELIVERED. — Monthly  and  annual 
synoptical  tables  of  privileges  granted,  prolonged,  as- 
signed, and  become  void.    ( Vienna  Gazette,  monthly,  and 
Commissioners  of  Patents'  Journal,  [vide  infra,  §  71.] ) 

23.  SPECIFICATIONS  PUBLISHED. — In  various  technical 
periodicals  and  official  publications  kept  at  the  Public 
Free  Library  of  the  Patent  Office. 

24.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — Petitions  for 
patent  may  be  addressed  by  the  applicant  or  his  agent 
to  the  governors  of  provinces  or  to  the  different  author- 
ities of  districts.     They  must  contain  the  Christian  and 
surname,  profession,  and  residence  of  the  applicant;  and, 
if  not  resident  in  the  empire,  the  name,  profession,  and 
residence  of  a  proxy  domiciled  there.     If  the  process  is 
intended  to  be  worked  by  a  firm  bearing  a  different 
name,  that  name  must  also  be  stated.     The  comprehen- 
sive title  of  the  invention  must  be  given,  and  the  num- 
ber of  years  for  which  the  patent  is  demanded,  which 
must  not  exceed  fifteen,  except  by  special  grant  of  the 
Emperor.     Foreign  patents  are  limited  in  duration  to 
that  of  the  original.     Applicant  must  also  state  whether 
he  desires  that  the  invention  shall  be  kept  secret  or  not. 
The  tax  may  be  paid  to  a  public   treasurer,  and  his 
receipt  must  be  given  in  with  the  application.     If  made 
by  an  agent,  a  power  of  attorney  must  be  put  in ;  and 
if  there  be  a  foreign  patent,  the  original  or  an  authenti- 
cated copy  must  be  produced.     The  description  of  the 
invention  must  be  under  a  sealed  cover,  indorsed  with 


AUSTRIA.  65 

the  title  of  the  invention,  and  the  address  of  applicant 
or  his  agent. 

Specifications  must  be  written  in  German  or  in  the 
language  of  the  province  where  the  application  is  made, 
and  must  contain  such  a  clear,  unambiguous,  and  com- 
plete detail  of  the  invention  as  to  enable  any  competent 
man  to  manufacture  the  article. 

Should  the  authority  to  whom  an  application  is  made 
think  the  invention  unfit  to  be  patented,  he  is  to  inform 
the  petitioner  thereof,  requiring  him  to  withdraw  it,  and 
give  a  receipt  for  the  sealed  specification.  An  appeal  is 
allowed  to  the  Minister  of  Commerce  and  Trades.  A 
defective  specification  may  be  amended. 

No  examination  of  the  novelty  or  merit  of  the  inven- 
tion is  made,  the  patent  being  delivered  at  the  mere  risk 
and  expense  of  the  applicant. 

The  privilege  of  a  patent  extends  to  the  whole  of  the 
Austrian  dominions;  that  is  to  say,  to  Austria  proper, 
Bohemia,  Austrian  Italy,  the  Polish  provinces,  Istria, 
Salzburg,  Styria,  Silicia,  Moravia,  and  the  Tyrol. 

Form  of  Petition  for  a  Patent. 

[Insert  address  of  the  authorities  of  the  respective  district 
or  province. 

I  [or  we,  as  the  case  may  be,  Christian  and  surname,  pro- 
fession, and  domicil]  beg  to  state  that  have  made  a 
new  discovery,  [invention,  improvement,']  consisting  essen- 
tially in  [insert  the  comprehensive  title.] 

The  complete  specification,  drawn  up  according  to  the 
provisions  of  section  twelve  of  the  patent  law  of  is 

subjoined  in  the  appendix. 
6* 


66  FOREIGN  PATENT  LAWS. 

{Insert  whether  the  specification  is  to  be  kept  secret,  and 
state  the  exact  number  of  the  drawings,  models,  patterns,  £c., 
if  any.'] 

For  this  discovery  [invention,  improvement],  announced 
and  duly  specified,-  which  the  undersigned 

petitioner  believe  ,  to  the  best  of  knowledge,  to  be 
patentable  and  new,  according  to  the  provisions  of  the 
said  patent  law,  and  legal  for  obtaining  an  exclusive 
privilege  at  own  risk  and  responsibility,  solicit 

such  a  privilege  for  the  stated  discovery,  [invention, 
improvement,]  in  the  manner  as  represented  in  the  an- 
nexed sealed  specification,  under  the  legal  clauses  and 
conditions,  for  the  term  of  years,  for  which  pur- 

pose pay  the  entire  patent  tax  of  florins, 

due  according  to  section  eleven  of  the  said  patent  law, 
and  request  the  delivery  of  an  official  certificate  for 
securing  prior  claims. 

[Address  and  date.']  [Signature.'] 

Where  not  the  money,  but  the  receipt  of  a  public  pay 
office  is  tendered  with  the  application  for  patent,  such 
receipt  must  contain  the  name  of  petitioner,  the  title  of 
the  invention,  the  number  of  years  for  which  the  tax 
has  been  paid,  and  the  amount  in  words  at  length.  Any 
deficiency  or  defect  in  this  document  must  be  remedied 
before  the  petition  can  be  received. 

The  tax  being  paid,  and  the  petition  being  found 
worded  and  directed  according  to  prescription,  the  par- 
ties being  present,  an  official  memorandum  is  to  be 
inscribed  on  the  cover  of  the  sealed  specification,  stating 
the  day  and  hour  when  the  petition  was  delivered  and 
the  amount  of  tax  paid,  and  the  applicant  or  his  agent 


BADEN  AND  THE  PETTY  GERMAN  STATES.  67 

must  also  sign  it.  Of  this  formality  an  official  certifi- 
cate is  to  be  delivered  to  the  applicant. 

These  formalities  being  fulfilled,  the  petition  is  to  be 
forwarded  within  three  days  to  the  governor  of  the 
respective  province,  unless  the  delivery  took  place  in 
the  chief  town  of  the  province,  whence,  if  found  cor- 
rect, all  the  documents  are  to  be  forwarded  to  the  Min- 
ister of  Commerce  and  Trades,  with  a  report  from  the 
governors. 

The  petition  having  been  found  correct,  or  its  defects 
having  been  corrected,  and  the  article  having  been 
deemed  patentable,  letters  patent  are  then  issued,  the 
minister  having  the  power  to  impose  on  the  working  of 
the  patent  such  conditions  or  restrictions  as  may  be  con- 
sidered necessary. 

III.  The  Grand  Duchy  of  Baden,  and  Petty  States  of 
Germany. 

25.  No  special  patent  legislation. 

25.  No  SPECIAL  PATENT  LEGISLATION. — The  Minister 
of  the  Interior,  however,  grants  privileges  for  inventions, 
after  an  examination  as  to  novelty  and  utility  by  compe- 
tent commissioners.  The  Government  fees  amount  to 
40  or  50  florins,  (12  fls.— £1.)  The  term  for  which  pat- 
ents are  granted  is  five  and  ten  years.  (Annual  lists  of 
patents  published  in  the  Commissioners  of  Patents'  Journal, 
vide  infra,  §  71.) 

In  the  following  States  there  is  no  special  legislation, 
but  the  respective  Governments  grant  privileges  to  in- 
ventors for  the  exclusive  use  or  working  of  their  inven- 
tions: 


68 


FOREIGN  PATENT  LAWS. 


Anhalt-Dessau. 

Anhalt-Bernberg. 

Anhalt-Cothen. 

Brunswick. 

Bremen. 

Frankfort. 

Hamburgh. 

Hesse-Cassel. 

Hesse-Darmstadt. 

Hesse-Homburg. 

Hohenzollen-Sigmarigen. 

Lippe-Detmold. 

Lippe-Schaumburg. 

Lubeck. 


Mecklenburg-Schwerin. 

Mecklenburg-Strelitz. 

Nassau. 

Oldenburgh. 

Reuss-Schleitz. 

Reuss-Ebersdorf.          9 

Reuss-Greiz. 

Sachsen-Altenburg. 

Sachsen-Coburg-Gotha. 

Sachsen-Meinengen. 

Sachsen-Weimar-Eisenacli. 

Schwarzburg-Rudolstadt. 

Schwarzburg-Sonderhausen. 

Waldeck. 


IV.  Bavaria. 


SEC. 

26.  Law,  date,  and  where  recorded. 

27.  Kinds  of  patents. 

28.  Previous  examination. 

29.  Duration. 

30.  Annulment. 

31.  Government  fees. 

32.  Documents  required  and  where 

to  be  left. 


SEC. 

33.  Working  and  extension. 

34.  Assignments. 

35.  Other  legal  provisions. 

36.  Specifications,  inspection   and 

copies  of. 

37.  List  of  patents  delivered. 

38.  Specifications  published. 

39.  Proceedings  to  obtain  a  patent. 


26.  LAW,  DATE,  AND  WHERE  RECORDED. — Royal  ordi- 
nance of  llth  September,  1825,  and  organic  law  for  the 
regulation  of  trades,  dated  17th  December,  1853.     (See 
Commissioners  of  Patents'  Journal,  [vide  infra,  §  71,]  No. 
262,  An.,  1856.) 

27.  KINDS  OF  PATENTS. — Patents  for  inventions,  im- 
provements, and  importations  granted  to  natives  and 


BAVARIA.  69 

foreigners  residing  or  represented  in  Bavaria.     ISTo  guar- 
anty as  to  novelty. 

28.  PREVIOUS  EXAMINATION. — By  the  Minister  of  Com- 
merce and  Public  "Works,  as  to  novelty,  utility,  and  for 
sanitary  reasons. 

29.  DURATION. — From  one  to  fifteen  years.     Imported 
inventions  according  to  duration  of  original  patent. 

30.  ANNULMENT. — In  case  of  the  invention  not  being 
new,  or  the  description  thereof  having  been  published  in 
German  or  foreign  works. 

31.  GOVERNMENT  FEES. — Two  guineas  for  one  year; 
£2  105.  for  two  years;  £3  7s.  for  three  years;  four  guin- 
eas for  four  years;  £5  for  five  years;  £6  for  six  years; 
£7  10s.  for  seven  years;  £9  for  eight  years;  £10  17s.  for 
nine  years ;  £12  10s.  for  ten  years ;  £14  12s.  for  eleven 
years ;  £16  14s.  for  twelve  years ;  £18  for  thirteen  years ; 
£21  for  fourteen  years ;  £23  for  fifteen  years ;  besides  a 
stamp  duty  of  five  shillings. 

32.  DOCUMENTS  REQUIRED  AND  WHERE  TO  BE  LEFT. — 
A  petition  of  the  inventor  or  his  proxy,  (with  power  of 
attorney,)  addressed  to  the  Minister  of  Commerce  and 
Public  Works ;  the  fees  and  stamp  duty ;  a  description, 
with  drawings,  models,  or  patterns.     In  cases  of  import- 
ation, the  original  patent,  (or  a  legalized  copy  thereof.) 

33.  WORKING  AND  EXTENSION. — Original  terms  extend- 
ed to  fifteen  years  at  most.     Patents  for  less  than  six 
years  to  be  worked  within  the  first  half  of  the  period 
allowed ;  patents  for  six  years  and  more,  within  three 
years ;  patents  of  importation,  within  one  year.     Work- 
ing not  to  be  interrupted  for  two  years. 

34.  ASSIGNMENTS. — To  be  recorded  at  the  Ministry  of 
Commerce  and  Public  Works  within  three  months. 


70  FOREIGN  PATENT  LAWS. 

35.  OTHER  LEGAL  PROVISIONS. — Infringement  punish- 
able by  a  fine  of  from  £8  to  £41,  (half  to  the  poor-box.) 
Counterfeits  confiscated.    Injuries  done  unknowingly  and 
in  good  faith  punishable  by  the  interdiction  only  of  the 
illegal  undertaking. 

36.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF. — Spe- 
cifications of  patents  that  have  become  extinct,  or  such 
as  are  not  to  be  kept  secret,  may  be  inspected  at  the 
above  ministry. 

37.  LIST  OF  PATENTS  DELIVERED. — In  the  official  ga- 
zette, in  a  register  at  the  above  ministry,  and  in  every 
chief  provincial  town;  in  the  Commissioners  of  Patents' 
Journal. 

38.  SPECIFICATIONS  PUBLISHED. — At  the  expiration  of 
the  patent,  if  deemed  interesting,  (mostly  in  the  Bay- 
rische  Kunst  und  Gewerbeblatt.}    May  be  consulted  at  the 
Public  Free  Library  of  the  Patent  Office. 

39.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — The  petition 
for  a  patent  must  be  addressed  to  the  Minister  of  Com- 
merce and  Public  Works;  it  must  contain  the  Christian 
and  surname  of  the  applicant,  his  calling  and  place  of 
abode,  and,  if  a  foreigner,  those  of  his  agent  in  Bava- 
ria, the  general  but  characteristic  designation,  of  the  in- 
vention, and  must  state  the  number  of  years  for  which 
the  patent  is  demanded.     The  petition  must  be  accom- 
panied by  a  detailed,  complete,  and  true  description,  in 
German,  or  accompanied  by  a  German  translation,  of 
the  invention,  with  drawings,  models,  &c.,  when  neces- 
sary.    The  specification  may  be  open,  or  under  cover,  at 
the  option  of  the  petitioner.     The  documents  must  be 
indorsed  with  the  exact  day  and  hour  of  the  deposit,  and 
a  certificate  to  the  same  effect  must  be  given  to  the  peti- 


BELGIUM. 


71 


tioner.  The  application  must  always  be  accompanied 
with  the  amount  of  the  tax  and  stamp  duty  of  three 
florins.  "Where  the  specification  is  found  defective,  it 
will  be  returned  for  correction. 


V.  Belgium. 


SEC. 

40.  Law,  date,  and  where  recorded. 

41.  Kinds  of  patents. 

42.  Previous  examination. 

43.  Duration. 

44.  Government  fees. 

45.  Documents  required,  &c. 

46.  Working  and  extension. 

47.  Assignments. 

48.  Specifications,  copies  of. 

49.  List  of  paients  delivered. 


SEC. 

50.  Specifications  published. 

51.  Originals  of  specifications. 

52.  Legal  proceedings. 

53.  Causes  of  nullity. 

54.  Proceedings  to  obtain  a  patent. 

55.  Declaration. 

56.  Form  of  a  patent. 

57.  Form  of  transfer  of  patent. 

58.  Form  of  certificate  of  reception 

of  a  patent  by  transfer. 


40.  LAW,  DATE,  AND   WHERE  RECORDED. — Royal  de- 
crees of  24th  May,  1854,  and  27th  March,  1857.     (See 
Commissioners  of  Patents'  Journal,  [vide  infra,  §  71,]  Nos. 
292  and  348.)  " 

41.  KINDS  OF  PATENTS. — Patents  of  invention,  import- 
ation, and  improvement  granted  to  natives  or  foreign- 
ers residing  or  represented  in  Belgium. 

42.  PREVIOUS  EXAMINATION. — None. 

43.  DURATION. — Twenty  years  at  most  from  the  date 
of  the  deposit.     Foreign  inventions   according  to   the 
longest  term  granted  abroad. 

44.  GOVERNMENT  FEES. — Ten   francs   the   first  year, 
twenty  francs  the  second  year,  and  so  on  till  the  twen- 
tieth year,  when  the  fees  are  two  hundred  francs,  (one 
franc,  equal  ten  pence.)     Original  patentees  exempt  from 
fees  for  patents   of  improvement.      Patentees  having 


72  FOREIGN  PATENT  LAWS. 

forfeited  their  rights  by  not  making  the  annual  payment 
in  due  time  may  recover  them  within  six  months  follow- 
ing the  expiration  of  their  patent,  by  paying  a  penalty 
of  ten  francs,  (eight  shillings.) 

45.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT.- — A 
petition  of  the  inventor,  or  his  proxy,  on  stamped  paper, 
to  the  Minister  of  the  Interior;  a  specification,  (two  cop- 
ies,) in  French,  Flemish,  or  German,  (foreign  specifica- 
tions, however,  only  in  French;)  drawings  (two  copies) 
on  a  metrical  scale,  models  or  patterns;  an  acknowledg- 
ment of  the  receipt  of  ten  francs  paid  to  the  receveur- 
general;  a  memorandum  of  the  various  documents. 
Deposited  at  the  registrar's  office  of  the  respective  pro- 
vincial governments,  or  at  the  office  of  the  commissary 
of  a  district,  or  at  the  Ministry  of  the  Interior  at  Brus- 


46.  WORKING  AND  EXTENSION. — The  working  of  the 
invention  must  take  place  within  one  year  from  its  hav- 
ing been  worked  abroad,  and  not  be  interrupted,  without 
good  reason,  for  one  year.     Prolongations  granted  for 
one  year,  by  applying  two  months  previously.     Patents 
of  improvement,  taken  out  by  others  than  by  the  pat- 
entee of  the  original  invention,  cannot  be  worked  together 
with  the  original  invention  without  the  consent  of  the 
original  inventor,  and  vice  versa. 

47.  ASSIGNMENTS. — By  notarial  act,  registered  at  the 
Ministry  of  the  Interior  on  payment  of  ten  francs,  and 
published  quarterly  in  the  official  publication  of  specifi- 
cations, together  with  the  list  of  patents  annulled  or 
expired. 

48.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF. — In- 
spection free  at  the  Ministry  of  the  Interior  three  months 


BELGIUM.  73 

after  the  delivery  of  the  patent.     Copies  on  payment  of 
costs. 

49.  LIST  OF   PATENTS   DELIVERED. — Published   every 
fortnight  in  the  Moniteur  Beige  and  in  the  Commissioners 
of  Patents'  Journal.     Lists  of  patents  that  have  become 
void  published  quarterly  in  the  Moniteur  Beige. 

50.  SPECIFICATIONS  PUBLISHED. — Three  months  after 
the  grant  of  the  patent  in  full,  or  in  the  form  of  extracts. 
At  all  events,  patentees  may  have  their  specifications 
published  in  full,  at  their  own  expense,  by  giving  pre- 
vious notice  thereof  to  the  administration  one  month  at 
least  before  the  expiration  of  said  term.     Said  publica- 
tions are  kept  at  the  library  of  the  United  States  Patent 
Office. 

51.  ORIGINALS  OF  SPECIFICATIONS,  (MODELS.) — Depos- 
ited at  the  expiration  of  the  patent  in  the  Museum  of 
Industry,  Brussels. 

52.  JURISDICTION  AND  LEGAL  PROCEEDINGS. — The  Tri- 
bunal de  lre  Instance.     Legal  proceedings  to  be  ruled  by 
article  587  of  the  Code  Civil. 

53.  CAUSES  OF  NULLITY. — Want  of  novelty;  non-pay- 
ment of  the  annual  fees ;  fraudulent  or  defective  descrip- 
tion; previous  publication,  except  official  foreign  pub- 
lications of  inventions  patented  abroad,  and  for  which 
patents  of  importation  are  sought  in  Belgium. 

54.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — The  applicant 
for  a  patent,  or  his  agent,  must  make  application  to  one 
of  the  provincial  governments  of  the  kingdom,  or  at  the 
office  of  one  of  the  district  commissioners,  if  situated  at 
a  distance  from  the  chief  town  of  the  province.     To  this 
application  must  be  added  in  a  sealed  envelope — 

1.  A  specification  of  the  objects  invented. 
7 


74  FOREIGN  PATENT  LAWS. 

2.  The  drawings,  patterns,  or  specimens  necessary  to 
understand  the  specification. 

3.  A  duplicate,  certified  as  being  in  conformity  with 
the  specification  and  drawings. 

4.  A  list  of  the  objects  deposited. 

All  these  documents  must  be  signed  by  the  applicant 
or  his  agents. 

A  receipt,  showing  that  the  first  year's  fee  of  ten  francs 
has  been  paid,  must  be  deposited  with  the  above. 

The  application  must  be  on  stamped  paper,  and  con- 
tain the  Christian  and  surname  of  the  inventor,  his  pro- 
fession, and  his  address,  real  or  elected,  in  the  kingdom, 
and  it  must  express  the  object  of  the  invention  distinctly 
and  concisely.  It  must  be  confined  to  one  principal  in- 
vention, with  its  details  and  applications.  If  a  patent  of 
importation,  it  must  state  the  duration  of  the  original 
patent  and  the  country  where  granted.  An  agent  must 
produce  a  power  to  act.  (The  decree  says  this  must  be  in 
due  legal  form,  but  the  practice  is  not  to  require  that  the 
power  be  legalized  by  notaries,  magistrates,  or  consuls.) 

The  specifications  must  be  in  French,  Flemish,  or 
German,  and,  if  not  in  French,  with  a  French  translation. 
When  the  inventor  is  not  resident  in  Belgium,  the  spec- 
ification should  be  without  interlineation  or  erasure,  and 
any  words  interlined  or  erased  should  be  counted,  certi- 
fied, and  the  pages  and  references  indicated.  The  speci- 
fication must  be  clear  and  distinct,  and  conclude  with  a 
summary  of  the  matter  of  which  it  consists. 

The  drawings  should  be  in  ink,  to  a  metrical  scale, 
properly  indicating  the  invention  in  plan,  sections,  and 
elevations,  and  the  parts  which  contain  the  invention 
patented  should  be  of  a  different  color  to  the  rest. 


BELGIUM.  75 

A  statement  must  be  drawn  up  and  signed  by  the  ap- 
plicant and  the  registrar  of  the  provincial  government, 
or  by  the  commissioner  of  the  district,  containing  the 
day  and  hour  of  the  deposit  and  the  title  of  the  invention, 
the  inventor's  Christian  and  surname,  calling,  and  address, 
or  those  of  his  agent.  If  a  patent  of  importation,  that 
fact  must  be  mentioned,  with  the  date  and  duration  of 
the  patent  in  the  country  where  it  originated,  and  the 
name  of  the  patentee.  This  document  must  also  con- 
tain an  acknowledgment  of  the  payment  of  the  first  an- 
nual fee,  and  be  attached  to  the  packet  containing  the 
specification  and  drawings.  A  copy  gratis  will  be  given 
to  the  applicant. 

The  offices  for  registration  of  patents  are  open  daily 
from  10  a.  m.  to  2  p.  m. 

A  register  of  all  documents  secured  at  the  offices  will 
be  open  to  public  inspection  at  the  office  of  the  Minister 
of  the  Interior. 

In  case  of  omissions  or  irregularity  of  form,  rectifica- 
tions may  be  made,  and  a  note  of  such  alterations  men- 
tioned in  the  register. 

A  certificate  of  the  Minister  of  the  Interior  will  be 
given  to  the  applicant  without  delay,  stating  that  the 
prescribed  formalities  have  been  complied  with.  This 
certificate  will  constitute  his  patent  right.  The  first  copy 
will  be  given  gratis,  but  all  others  must  be  paid  for. 

55.  DECLARATION. 

PEOVINCE  OP 

This  day,  [day  of  the  month,  18     ,]  at  o'clock,  Mr.  has 

deposited  in  our  hands  the  present  package,  sealed  with  his  seal,  which  he 
has  informed  us  contains  all  the  descriptive  documents  of  [title  of  patent], 
for  which  he  solicits  a  patent  of  invention  [or  importation]  for  five,  ten, 
or  fifteen  years,  as  is  indicated  in  the  petition  annexed.  Mr. 


76  FOREIGN  PATENT  LAWS. 

has  declared  to  us  that  he  is  the  inventor  [or  importer  of  the  said  ob- 
ject.] 

Done  at  the  secretarial  of  the  provincial  government  the 
day  of  • 

56.  FORM  OF  A  PATENT  OF  INVENTION,  IMPORTATION,  OR 
IMPROVEMENT. — 

We,  Leopold,  King  of  the  Belgians,  to  all  present  and  to  come,  greet- 
ing :  Seeing  the  demand  of  Mr.  ,  domiciled  ,  tending  to 
obtain,  according  to  the  law  of  25th  January,  1817,  a  patent  of 
for  years,  for  [the  title],  of  which  he  declares  himself  to  be  the  invent- 
or, [or  importer,]  as  appears  by  the  proems-verbal  made  on  the  deposit  of 
the  documents  at  the  secretarial  of  the  province  of  ,  the 

Seeing  the  drawings  and  descriptions,  as  follows  : 

We  have  decreed  and  decree : 

A  patent  of  years  is  granted  to  Mr.  for 

the  above  described. 

This  patent  guaranties  the  following  rights  to  its  possessor : 

1.  To  make  and  sell  exclusively  in  the  whole  kingdom,  during  the  whole 
term  of  the  patent,  the  patented  objects,  or  to  cause  them  to  be  made  or 
sold  by  others  whom  he  may  authorize. 

2.  To  pursue  in  the  courts  of  law  those  who  in  any  way  infringe  on  the 
exclusive  rights  which  have  been  accorded  him,  and  to  proceed  against 
them  at  law  for  the  purpose  of  obtaining  confiscation  for  his  profit  of  the 
objects  made  according  to  Lis  pattern  model,  but  not  yet  sold,  and  of  the 
amount  for  which  any  such  objects  may  have  been  sold,  as  likewise  to  insti- 
tute actions  for  damages  and  interest,  if  there  be  any.     The  Government 
guaranties  in  nowise  the  novelty  or  the  merits  of  the  invention,  and  it 
may  declare  the  present  patent  null,  and  publish  the  invention  for  one  of 
the  causes  named  in  article  8  of  the  law  of  25th  January,  1817. 

The  objects  patented  shall  be  made  in  the  country,  and  the  patentee  or 
his  assigns  shall  (at  the  expiration  of  the  delay  fixed  by  letter  C  of  article 
8  of  the  law,  and  earlier  if  the  patent  so  stipulates)  be  required  to  produce" 
to  the  Minister  of  Interior,  at  any  time  he  may  require  it,  a  sufficient  proof 
of  the  patented  object  having  been  put  into  activity  in  an  established  and 
regular  way,  so  that  it  may  be  considered  as  being  usefully  in  activity  in 
the  country. 

The  Government  reserves  to  itself  the  faculty  of  quashing  the  patent  and 
giving  the  object  to  the  public  if  these  obligations  be  not  strictly  complied 
with. 

Given  the 


GREAT  BRITAIN  AND  IRELAND. 


77 


57.  FORM  OP  ACT  OF  TRANSFER  OF  PATENT. — 

This  day,  .  ,184  ,  Mr.  presented  himself  at  our 

secretarial  of  the  provincial  government,  to  require  a  procSs-verbal  to  be 
made  up  of  the  transfer  which  he  has  made  to  Mr.  by  notarial 

act,  of  the  whole  or  part  of  the  patent  which  was  granted  to  him  the 

for  ,  which  procds-verbal  the  parties  interested  have 

signed  with  us,  after  having  paid  the  dues  indicated  in  the  arrangement  for 
the  delivery  of  the  patent. 

Done  at  the  secretarial  of  the  province  of  the 

58.  FORM  OF  CERTIFICATE  OF  RECEPTION  OF  A  PATENT 
BY  TRANSFER. — 

This  day,  ,  184  ,  Mr.  presented  himself  at  our 

secretarial,  to  obtain  a  procSs-verbal  of  the  acquisition  which  he  has  made, 
as  proved  by  act  of  the  notary  by  right  of  succession,  of  the  whole  or  part 
of  a  patent  of  invention  which  we  delivered  the  ,  for  to 

Mr.  ,  deceased. 

Which  procSs- verbal  the  interested  party  has  signed  with  us,  after  hav- 
ing paid  the  dues  indicated  in  the  tariff  of  the  arrangement  for  the  delivery 
of  patents. 

Done  at  the  secretarial  of  the  province  of  ,  the 

Enacted  by  his  Majesty  the  26th  March,  1817. 

The  Secretary  of  the  Department  of  Instruction 

of  the  Arts  and  Sciences. 


VI.  Great  Britain  and  Ireland. 


SEC. 

59.  Law,  date,  and  where  recorded. 

60.  Kinds  of  patents. 

61.  Previous  examination. 

62.  Duration. 

63.  Stamp  duties  to  be»paid. 

64.  Documents  required  at  the  Pat- 

ent Office. 

65.  Assignments  and  licenses. 

66.  List   of    patents    at    different 

stages. 

67.  Specifications,  disclaimers,  alter- 

7* 


SEC. 

ations,  provisional  specifica- 
tions, assignments,  licenses. 

68.  Specifications,  disclaimers,  al- 

terations, and  indexes. 

69.  Originals  of  specifications,  etc. 

70.  Free  Public    Library  of   the 

Commissioners  of  Patents. 

71.  Commissioners  of  Patents'  Jour- 

nal. 

72.  Infringements. 

73.  Other  legal  provisions. 


78  FOREIGN  PATENT  LAWS. 

59.  LAW,  DATE,   AND    WHERE    RECORDED. — Acts   15 
and  16  Viet.,  cap.  83;  16  Viet.,  cap.  5;  16  and  17  Viet., 
cap.  115.     In  operation  since  1st  October,  18S-2.     (Pat- 
ent Law  Amendment,  Patent  Office  25  Southampton 
Buildings,  Chancery  Lane.) 

60.  KINDS  OP  PATENTS. — Letters  patent,  disclaimers, 
and  memoranda  of  alteration  issued  to  British  subjects 
and  aliens  residing  or  represented  in  the  United  King- 
dom.    Provisional  protection  during  six  months.     Valid 
for  the  whole  of  the   United  Kingdom,  the   Channel 
Islands,  and  the  Isle  of  Man.     Medicines  vended  under 
a  Government  stamp  as  "patent  medicines"  have  never 
been  the  subject  of  letters  patent. 

61.  PREVIOUS  EXAMINATION. — None  as  to  novelty  or 
utility. 

62.  DURATION. — Patents  are  issued  for  fourteen  years, 
subject  to  prolongation  by  Privy  Council.     Patents  ex- 
pire at  the  end  of  the  third  or  seventh  year,  if  the  requi- 
site payments  in  stamp  duties  are  not  made.     Letters 
patent  are  dated  from  the  day  of  application,  and  when 
antedated  are  to  be  of  the  same  validity  as  if  sealed  on 
the  day  of  the  date.     Letters  patent  for  patented  foreign 
inventions  according  to  the  term  of  foreign  patent. 

63.  STAMP  DUTIES  TO  BE  PAID. — On  petition,  £5;  on 
certificate  of  record  on  notice  to  proceed,  £5;  on  war- 
rant for  letters  patent,  £5;  on  the  sealing  of  letters  pat- 
ent, £5 ;  on  specification,  £5 ;  on  the  letters  patent  before 
the  expiration  of  the  third  year,  £50;  on  the  letters  pat- 
ent before  the  expiration  of  the  seventh  year,  £100:  i.  e., 
£175  for  a  patent  of  fourteen  years;  on  certificate  of 
record  on  notice  of  objections,  £2;  for  every  search  and 
inspection,  Is.;  for  entry  of  assignment  or  license,  5s.; 


GREAT  BRITAIN  AND  IRELAND.  79 

on  certificate  of  assignment  or  license,  5s. ;  on  applica- 
tion for  disclaimer,  £5;  on  caveat  against  disclaimer,  £2; 
on  office  copies  of  documents,  for  every  seventy-two 
•words,  2d.  The  payments  for  the  above  stamp  duties 
are  made  at  Somerset  House,  (Inland  Revenue  Depart- 
ment,) and  the  certificates  for  such  payments  are  deliv- 
ered at  the  Patent  Office,  (gratis.)  Fees  to  be  paid  to  the 
law  officers  and  to  their  clerks :  By  the  person  opposing  a 
grant  of  letters  patent,  £3  10s. ;  by  the  petitioner  on  the 
hearing  of  the  case  of  opposition,  £3  10s. ;  by  the  peti- 
tioner for  the  hearing  previous  to  the  first  allowing  a 
disclaimer  or  memorandum  of  alteration  in  lettei -d  patent 
and  specification,  £3  5s.;  by  the  person  opposing  the 
allowance  of  such  disclaimer,  £3  5s.;  by  the  petitioner 
for  the  first  allowing  a  disclaimer  or  memorandum  of 
alteration  in  letters  patent  and  specification,  £3  15s.  6d. 
64.  DOCUMENTS  REQUIRED  AT  THE  PATENT  OFFICE. — 
A  petition  to  the  Queen  by  the  inventor  or  his  agent ;  a 
declaration  of  the  inventor  or  his  agent,  made  before  a 
master  in  chancery,  or  justice  of  the  peace,  or  a  British 
consul  abroad;  a  provisional  or  complete  specification, 
(two  copies  of  the  latter,  one  on  parchment,)  together 
with  the  necessary  drawings,  (two  copies  on  parchment,) 
one  inch  to  a  foot  recommended ;  an  abridgement  (two 
copies)  of  provisional  specification,  or  of  complete  speci- 
fication, when  filed  with  the  petition  and  declaration; 
notice  to  proceed,  eight  weeks  clear  before  the  expira- 
tion of  six  months ;  warrant  and  great  seal,  twelve  clear 
days  before  the  expiration  of  six  months,  (upon  special 
circumstances  the  Lord  Chancellor  may  allow  a  further 
extension  of  time;)  notice  of  opposition  to  be  given 
witbm  twenty-one  days  after  the  date  of  notice  to  pro- 


80  FOREIGN  PATENT  LAWS. 

ceed  in  the  gazette,  or,  in  case  of  opposition  to  great 
seal,  twelve  days  before  the  expiration  of  provisional 
protection.  (N.  B. — Application  by  letter  cannot  be  en- 
tertained.) For  the  Great  Seal  Patent  Office,  the  initials 
are  W.  C.,  the  district  being  western  central.  In  the 
direction  of  a  letter,  these  initials  should  be  legibly  writ- 
ten in  a  separate  line,  and  should  in  all  cases  end  the 
address,  thus: 
THE  COMMISSIONERS  OF  PATENTS, 

Great  Seal  Patent  Office, 

25  Southampton  Buildings, 

London, 
W.  C. 

65.  ASSIGNMENTS  AND  LICENSES. — Recorded  in  the  Reg- 
ister of  Proprietors  at  the  Patent  Office.     Entries  may 
be  expunged. 

66.  LIST  OF  PATENTS  AT  THEIR  DIFFERENT  STAGES. — 
Published  in  the  London  Gazette  and  in  the  Commis- 
sioners of  Patents'  Journal,  within  five  days  of  the  appli- 
cation and  notice  to  proceed  and  within  a  fortnight  of 
the  sealing  of  the  Patent;  also,  List  of  Patents  on  which 
the  stamp  duty  of  £50  and  £100  has  been  paid,  &c.    (Com- 
pare Commissioners  of  Patents'  Journal,  [vide  infra,  §  71.]) 

67.  SPECIFICATIONS,  DISCLAIMERS,  MEMORANDA  OF  AL- 
TERATIONS, PROVISIONAL  SPECIFICATION,  ASSIGNMENTS,  AND 
LICENSES. — Open  to  the  inspection  of  the  public  at  the 
Patent  Office,  London ;  at  the  Enrollment  Office  of  the 
Court  of  Chancery,  in  Dublin;  and  at  the  office  of  the 
Directory  of  Chancery  in  Scotland.     (K.  B.  Not  within 
the  term  of  provisional  protection.) 

68.  SPECIFICATIONS,  DISCLAIMERS,  MEMORANDA  OF  AL- 
TERATIONS, AND  INDEXES. — Published  by  the  Commission- 


GREAT  BRITAIN  AND  IRELAND.  81 

era  of  Patents,  and  sold  at  cost  price,  at  the  Patent  Office, 
within  a  month  of  the  issue  of  the  letters  patent.  All 
old  specifications  have  been  published  likewise,  and  are 
sold  at  cost  price.  In  course  of  publication  and  partly 
published,  (thirty-six  classes,)  Abridgments  (in  classes 
and  chronologically  arranged)  of  all  Specifications  of 
Patented  Inventions,  from  the  earliest  enrolled  to  those 
published  under  the  act  of  1852. 

69.  ORIGINALS  OF  SPECIFICATION,  ETC.,  (MODELS.) — Kept 
at  the  Patent  Office.     Models  are  not  required,  but  when 
presented  or  lent,  they  are  deposited  in  the  Museum  of 
the  Commissioners  of  Patents,  South  Kensington,  which 
is  open  daily  to  the  public  free  of  charge. 

70.  FREE  PUBLIC  LIBRARY  OF  THE  COMMISSIONERS  OF 
PATENTS. — The  Reading-Room  in  the  office  of  the  Com- 
missioners of  Patents  is  open  daily  from  10  till  4  o'clock. 
In  addition  to  the  printed  specifications,  indexes,  and  other 
publications  of  the  Commissioners  of  Patents,  the  Library 
includes  the  official  publications  of  foreign  patents  and  a 
collection  of  the  leading  British  and  foreign  scientific 
journals  and  text-books,  in  the  various  departments  of 
science  and  art,  (about  sixty  thousand  volumes.)     The 
Commissioners  of  Patents'  publications  may  be  consult- 
ed at  the  public  libraries  of  the  chief  continental  States, 
the  British  Colonies,  and  America. 

71.  COMMISSIONERS  OF  PATENTS'  JOURNAL. — Published 
on  Tuesdays  and  Fridays :  price,  2d ;  by  post,  3d.     Con- 
tents :  1.  Applications  for  letters  patent ;  2.  Grants  of 
provisional  protection  for  six  months ;  3.  Inventions  pro- 
tected for  six  months  by  the  deposit  of  a  complete  spe- 
cification; 4.  Notices  to  proceed;  5.  Patents  sealed ;  6. 
Patents  extended;  7.  Patents   canceled;  8.  Patents  on 


82  FOREIGN  PATENT  LAWS. 

which  the  third  year's  stamp  duty  has  been  paid ;  9.  Pat- 
ents which  have  become  void  by  non-payment  of  the 
stamp  duty  of  £50  before  the  expiration  of  the  third 
year;  10.  Patents  on  which  the  seventh  year's  stamp 
duty  has  been  paid ;  11.  Patents  which  have  become  void 
by  non-payment  of  the  stamp  duty  of  £100  before  the 
expiration  of  the  seventh  year;  12.  Colonial  patents  and 
patent  law;  13.  Foreign  patents  and  patent  law;  14. 
Weekly  price  lists  of  printed  specification,  &c.;  15. 
Official  advertisements  and  notices  of  interest  to  patent- 
ees and  inventors  generally. 

The  patent  laws  of  the  colonies  of  Great  Britain  and 
of  foreign  States  are  published  in  full  in  about  eighty 
numbers  of  the  Commissioners  of  Patents'  Journal,  the 
official  organ  of  the  British  Patent  Office,  which  should 
be  found,  as  well  as  all  other  publications  of  the  British 
Commissioners,  in  the  Patent  Office,  "Washington ;  Pea- 
body  Institute,  Baltimore ;  Franklin  Institute  and  Phil- 
adelphia Library,  Philadelphia;  Astor  Library,  New 
York ;  Free  Library,  Boston ;  Young  Men's  Association 
Library,  Chicago;  Wisconsin  Historical  Society,  Madi- 
son ;  and  Cornell  University,  Ithaca,  New  York,  to  which 
institutions  they  have  been  presented  by  the  British  Gov- 
ernment. 

The  following  is  a  list  of  the  foreign  States  the  laws 
of  which  have  been  published  in  the  Commissioners  of 
Patents'  Journal: 
Argentine    Republic,    Nos.     Bavaria,  262. 

1393, 1394, 1453.  Belgium,  292,  348. 

Austria,  291.  British  Guiana,  798. 

Baden  and  petty  States  of      Canada,    279,    625,   856, 

Germany,  325.  1106,  1188,  1629. 


GREAT  BRITAIN  AND  IRELAND. 


83 


Cape  of  Good  Hope,  727. 

Ceylon,  648.% 

Cuba,  498. 

Dutch  West  Indies,  322. 

France,  228,  229,  947,  948, 

949, 1386. 
Germany,  435. 
Greece,  325. 
Hanover,  321. 
India,  240,  348,  552,  578. 
Italy,  1061,  1064,  1656. 
Jamaica,  660. 
Lucca,  321. 
Mauritius,  1282. 
Mexico,  496. 
Netherlands,  289,  1643. 
Newfoundland,  858. 
New  South  Wales,  386. 
New  Zealand,  861,  1639. 


Parma,  Piacenza,  and  Gu- 

astalla,  321. 
Poland,  335. 
Portugal,  325,  1026. 
Prussia,  313,  329. 
Queensland,  859. 
Roman  States,  319. 
Russia,  334,  508. 
Sardinia,   233,   235,   636, 

637,  639,  640. 
Saxony,  236. 
Sicilies,  (the  Two,)  316. 
South  Austria,  1442. 
Spain,  323. 
Sweden,  327,  354. 
Tasmania,  860. 
Trinidad,  883, 1698. 
Victoria,  186,  359,  1622. 
Wurtemburg,  314,  995. 


Norway,  665. 

72.  INFRINGEMENTS. — In  actions  for  infringement  of 
letters  patent  particulars  are  to  be  delivered,  and  no  evi- 
dence allowed  not  mentioned  therein.     Courts  of  com- 
mon law  may  grant  injunction  in  case  of  infringement. 
Particulars  to  be  regarded  in  taxation  of  costs. 

73.  OTHER  LEGAL  PROVISIONS. — Letters  patent  grant- 
ed to  the  first  inventor  not  to  be  invalidated  by  protec- 
tion obtained  in  fraud  of  the  first  inventor.     Specification 
and  objections  to  be  referred  to  law  officer.     Power  of 
law  officer  to  order  by  or  to  whom  costs  shall  be  paid. 
Nothing  to  affect  the  prerogative  of  the  Crown  in  grant- 
ing or  withholding  grant  of  letters  patent.     Nothing  to 


84' 


FOREIGN  PATENT  LAWS. 


give  effect  to  any  letters  patent  granted  in  any  colony. 
Letters  patent  may  be  granted  to  personal  representa- 
tives of  the  applicant  during  the  term  of  protection,  or 
within  three  months  after  applicant's  decease.  If  letters 
patent  be  destroyed  or  lost  other  letters  patent  may  be 
issued.  Letters  patent  not  to  prevent  the  use  of  inven- 
tions in  foreign  ships  resorting  to  British  ports,  except 
ships  of  foreign  States  in  whose  ports  British  ships  are 
prevented  from  using  foreign  inventions.  Certified  copies 
of  specifications,  &c.,  as  printed  by  Queen's  printers,  to 
be  evidence.  Copies  or  extracts  of  letters  patent,  &c., 
certified  and  sealed,  filed  at  Commissioners'  office,  to  be 
received  in  evidence.  Power  for  more  than  twelve  per- 
sons to  have  a  legal  interest  in  letters  patent.  Falsifica- 
tion or  forgery  of  entries  a  misdemeanor. 


VII.  Analysis  of  the  British  Patent  Laws. 


SEC. 

74.  Acts  of  Parliament;  rules. 

"75.  Commissioners. 

76.  Seal. 

77.  Petition  and  declarations. 

78.  Only  one  invention  to  be  in- 

cluded in  a  patent. 

79.  Copy  of  specification  with  appli- 

cation. 

80.  Petitions,  &c.,  to  be  left  at  office ; 

size. 

81.  Size  of  drawings. 

82.  Applications  referred. 

83.  Law  officer  may  amend  title. 

84.  Applicant  may  not  amend  pro- 

visional specification. 

85.  Nature  of  invention. 

86.  Pee  on  leaving  petition. 


SEC. 

87.  Provisional  protections. 

88.  Complete  specifications. 

89.  Fraud. 

90.  Complete  specification    adver- 

tised. 

91.  Complete    specification   stamp 

£5. 

92.  Notice  to  proceed. 

93.  Notice  to  proceed  advertised. 

94.  Opposition. 

95.  Applications  for  or  against  seal- 

ing. 

96.  Notice  to  proceed  fee  £3. 

97.  Objections  to  be  referred. 

98.  Law  officer  to  decree  cost. 

99.  Warrant  for  sealing  patent. 
100.  Complete  specification  filed. 


GREAT  BRITAIN  AND  IRELAND. 


85 


SEC. 

101.  Patent  fee  £5;  stamp  £5. 

102.  ^Future  payments. 

103.  Issue  of  letters  patent. 

104.  Issued  three  months  from  war- 

rant. 

105.  Accidental  delay. 

106.  Case  of  death. 

107.  If  lost,  new  patent  may  issue. 

108.  Date  of  letters  patent. 

109.  Patents  for  foreign  inventions. 

110.  Foreign  ships. 

111.  Copy  of  drawings. 

112.  Size  of  specifications. 

113.  Size  of  drawings  and  scale. 

114.  Extra  copy  of  specification. 

115.  Documents  to  be  legibly  signed. 


SEC. 

116.  Period  of  notice.  . 

117.  Public  inspection  of  documents. 

118.  Documents  to  be  printed. 

119.  Documents  evidence  in  courts. 

120.  Chronological    register;    copy 

of  license  may  be  had  and 
is  evidence. 

121.  Number  of  persons  interested. 

122.  Falsification  of  register. 

123.  Entries  in  register  expunged. 

124.  Disclaimers. 

125.  Confirmation  of  prolongation. 

126.  Infringement. 

127.  Judge's  order. 

128.  Taxing  costs. 

129.  Schedules  of  fees  and  stamps 


74.  ACTS  OF  PARLIAMENT;  RULES. — The  following  is 
an  analysis  of  the  patent  law  amendment  act,  1852,  (15 
and  16  Viet,  ch.  83,)  with  which  are  embodied  the  rules 
which  have  been  made  from  time  to  time  by  the  Lord 
Chancellor  and  the  Commissioners,  also  such  parts  of  the 
5  and  6  William  IV.,  ch.  83,  and  7  and  8  Viet,  ch.  89, 
and  12  anfl  13  Viet,  ch.  109,  as  are  retained  as  forming 
part  of  the  present  law  by  the  act  of  1852,  and  the  act 
of  the  16  and  17  Viet,  ch.  115,  to  amend  the  act  of  1852: 

75.  COMMISSIONERS. — 
The  Lord  Chancellor. 
The  Master  of  the  Rolls. 

The  Attorney  General  and  Solicitor  General  for  England. 
The  Lord  Advocate  and  Solicitor  General  for  Scotland. 
The  Attorney  General  and  Solicitor  General  for  Ireland. 

The  Crown  has  power  to  appoint  other  persons  as  Com- 
missioners. 

The  powers  of  the  act  may  be  exercised  by  any  three 
8 


86  FOREIGN  PATENT  LAWS. 

Commissioners,  the  Lord  Chancellor  or  Master  of  the 
Rolls  being  one.     (§  1.)  . 

76.  SEAL. — They  are  authorized  to  have  a  seal  made 
for  sealing  patents,  and  to  vary  such  seal  from  time  to 
time.     (§  2.)     They  may  make  rules  (not  inconsistent 
with  this  act)  for  conducting  the  business  of  the  office, 
and  for  the  purpose  of  the  act  may  provide  officers  and 
employ  clerks.     (§§  3,  4,  5.) 

77.  PETITION  AND  DECLARATIONS. — The  petition  for  the 
grant  of  letters  patent  and  the  declarations  required  to 
accompany  such  petition  shall  be  left  at  the  office  of  the 
Commissioners,  and  also  a  statement  in  writing,  called 
the  provisional  specification,  signed  by  or  on  behalf  of 
the  applicant,  and  describing  the  notion  of  his  inven- 
tion.    The  day  of  the  delivery  of  these  documents  at 
the  office  is  to  be  indorsed  upon  them,  and  a  certificate 
to  that  effect  given  to  the  depositor.     (§  6.) 

78.  ONLY  ONE  INVENTION  TO  BE  INCLUDED  IN  A  PATENT. 
Every  application  for  letters  patent,  and  every  title  of 
invention  and  provisional  specification,  must  be  limited 
to  one  invention  only,  and  no  provisional  protection  will 
be  allowed  or  warrant  granted  where  the  title  or  the 
provisional  specification  embraces  more  than  one  inven- 
tion.     (3d   Set   of  Rules,   December   12,  1853.)      The 
title  of  the  invention  must  point  out  distinctly  and  spe- 
cifically the  nature  and  object  of  the  invention.     (16.) 
The  expression  "invention"  shall  mean  any  manner  of 
new  manufacture  in  the  meaning  of  the  act  21  James  L, 
ch.3.     (§§6,7.) 

79.  COPY  OF  SPECIFICATION,  &c.,  TO  ACCOMPANY  APPLI- 
CATION.— A  true  copy,  under  the  hand  of  the  patentee, 
or  applicant,  or  his  agent,  of  every  specification  and  com- 


GREAT  BRITAIN  AND  IRELAND.  87 

plete  specification,  with  the  drawings  accompanying  the 
same,  if  any,  shall  be  left  at  the  office  on  filing  such 
specification  or  complete  specification.  (16  and  17  Viet., 
ch.  115.) 

80.  PETITIONS,  &c.,  TO  BE  LEFT  AT  OFFICE;  SIZE. — All 
petitions  for  letters  patent,  and  all  declarations  and  pro- 
visional specifications,  are  to  be  left  at  the  office.     They 
are  to  be  written  on  sheets  of  paper  twelve  inches  in 
length  and  eight  and  a  half  inches  in  breadth,  leaving  a 
margin  of  one  and  a  half  inch  on  each  side  of  each 
page.     (1st  Set  of  Rules,  October  1, 1852.) 

81.  SIZE  OF  DRAWINGS. — Drawings  to  accompany  pro- 
visional specifications  to  be  on  sheets  of  paper,  parch- 
ment, or  cloth,  twelve  inches  long,  eight  and  a  half  inches 
broad,  or  twelve  inches  broad  and  seventeen  inches  long, 
leaving  a  margin  of  one  inch  on  every  side  of  each  sheet. 
(1st  Set  of  Rules,  October  1,  1853.) 

82.  APPLICATIONS  REFERRED  TO  A  LAW  OFFICER,  WHOSE 
CERTIFICATE  FOR  FILING  GIVES  PROVISIONAL  PROTECTION 
FOR  Six  MONTHS. — The  application  for  letters  patent  shall 
be  referred  by  the  Commissioners  to  one  of  the  law 
officers,  (who  are  the  attorneys  and  solicitors  general  for 
England  and  Ireland,  and  lord  advocate  and  solicitor 
general    for   Scotland.)     (§  55.)     The   law   officer   may 
call  to  his  aid  a  scientific  or  other  person  and  fix  his 
remuneration,  which  is  to  be  paid  by  the  applicant.     If 
satisfied  with  the  provisional  specification,  the  law  officer 
shall  give  a  certificate  to  that  effect,  to  be  filed  at  the 
Patent  Office,  and  thereupon  the  invention  may  be  used 
and  published  during  a  term  of  six  months,  the  protec- 
tion thus  afforded  being  termed  provisional  protection. 

83.  LAW  OFFICER  MAY  AMEND  TITLE. — The  law  officer 


88  FOREIGN  PATENT  LAWS. 

has  the  power  to  cause  the  title  of  the  invention  to  be 
amended,  if  too  large  or  insufficient.     (§§  7,  8.) 

84.  APPLICANT  MAY  NOT  AMEND  PROVISIONAL  SPECIFI- 
CATION.— No  amendment  or  alteration  at  the  instance  of 
the  applicant  will  be  allowed  in  a  provisional  specifica- 
tion after  the  same  has  been  recorded,  except  for  the 
correction  of  clerical  errors  or  of  omissions  made  per 
in  curiam. 

85.  PROVISIONAL    SPECIFICATION     MUST     STATE    DIS- 
TINCTLY NATURE  OF  INVENTION. — The  provisional  speci- 
fication must  state  distinctly  and  intelligibly  the  whole 
nature  of  the  invention,  so  that  the  law  officer  may  be 
apprized  of  the  improvement  and  of  the  means  by  which 
it  is  to  be  carried  into  effect.    -(2d  Set  of  Rules,  October 
15,  1852.) 

86.  FEE  ON  LEAVING  PETITION  £5. — The  fee  to  be  paid 
on   leaving  petition  for  grant  of  letters  patent  is  £5. 
(Schedule  of  Act.) 

87.  PROVISIONAL  PROTECTIONS  TO  BE  ADVERTISED  IN 
GAZETTE. — Provisional  protections  are  to  be  advertised 
in  the  London  Gazette,  with  the  name  and  address  of  the 
petitioner,  the  title  of  his  invention,  and  the  date  of  the 
application.     (1st  Set  of  Rules,  Oct.  1, 1852.) 

88.  COMPLETE  SPECIFICATION  MAY  BE  AT  ONCE  DEPOS- 
ITED.— The  applicant  may,  instead  of   the  provisional 
specification,  deposit  with  the  petition  and  declaration  an 
instrument,  under  his  hand  and  seal,  called  a  complete 
specification,  particularly  describing  the  nature  of  his 
invention,  the  same  to  be  mentioned  in  such  declaration, 
and  the  day  of  delivery  of  these  documents  at  the  office 
shall  be  registered  there  and  indorsed  on  the  petition, 
declaration,  and  specification, ^and  a  certificate  thereof 


GREAT  BRITAIN  AND  IRELAND.  89 

shall  be  given  to  the  applicant  or  his  agent.  This  pro- 
ceeding shall  afford  protection  to  the  applicant  in  the  use 
of  his  patent  for  six  months.  (§  9.) 

89.  PREVIOUS  PATENTS  NOT  INVALIDATED   BY   SUBSE- 
QUENT PROTECTION  OBTAINED  BY  FRAUD. — Letters  patent 
granted  to  the  first  inventor  shall  not  be  invalidated  by 
reason  of  provisional  or  other  protection  obtained  in 
fraud  by  any  other  person.     (§  10.) 

90.  COMPLETE  SPECIFICATION  TO  BE  ADVERTISED  IN  GA- 
ZETTE.— Every  invention  protected  by  the  deposit  of  a 
complete  specification  shall  be  forthwith  advertised  in 
the  London  Gazette,  the  advertisement  setting  forth  the 
name  and  address  of  the  petitioner,  the  title  of  the  in- 
vention, the  date  of  the  application,  and  that  a  complete 
specification  has  been  deposited.     (1st  Set  of  Rules,  Oct. 
1,  1852.) 

91.  COMPLETE  SPECIFICATION  STAMP  £5. — The  stamp 
duty  on  a  complete  specification  is  £5.     (Schedule  of 
Act.) 

92.  AFTER  PROTECTION  OBTAINED  APPLICANT  MAY  GIVE 
NOTICE  TO  PROCEED;  How  APPLICATION  MAYBE  OPPOSED. 
The  applicant,  after  obtaining  a  provisional  protection 
or  depositing  a  complete  specification,  may  give  notice 
to  the  Commissioners  of  his  intention  to  proceed  with 
his   application   for   letters    patent,  which    notice  the 
Commissioners  shall  advertise.     Any  person  having  an 
interest  in  opposing  the  grant  of  such  letters  patent  may 
do  so  in  writing,  at  such  time  and  place,  and  according 
to  such  regulations,  as  the  Commissioners  may  appoint. 

93.  NOTICE  TO  PROCEED  TO  BE  ADVERTISED  IN  GA- 
ZETTE.— "When,  after  provisional  protection  or  the  deposit 
of  a  complete  specification,  the  petitioner  shall  give  no- 

8* 


90  FOREIGN  PATENT  LAWS. 

tice  in  writing,  at  the  office,  of  his  intention  to  proceed 
with  his  application  for  letters  patent,  the  same  is  to  be 
forthwith  advertised  in  the  London  Gazette,  with  the  name 
and  address  of  the  petitioner,  and  the  title  of  his  inven- 
tion. 

94.  OPPOSITION  MUST  BE  IN  WRITING  WITHIN  TWENTY- 
ONE  DAYS. — Any  person  may,  within  twenty-one  days 
thereafter,  leave  particulars  in  writing,  at  the  office,  of 
objections  to  the  application. 

95.  APPLICATIONS  FOR  OR  AGAINST  SEALING  TO  BE  BY 
NOTICE  IN  WRITING  LEFT  AT  OFFICE. — Every  application 
to  the  Lord  Chancellor  against  or  in  relation  to  the  seal- 
ing of  letters  patent  shall  be  by  notice,  and  such  notice 
shall  be  left  at  the  Commissioners'  office,  and  shall  con- 
tain particulars  in  writing  of  the  objections  to  the  sealing 
of  such  letters   patent.     (Chancellor's  Order,  Oct.  15, 
1852.) 

96.  NOTICE  TO  PROCEED  FEE  £5. — The  fee  on  giving 
notice  to  proceed  is  £5.     (Schedule  of  Act.) 

97.  OBJECTIONS  TO  BE  REFERRED  TO  LAW  OFFICER. — The 
time  for  making  objection  having  expired,  the  provis- 
ional or  complete  specification,  with  the  particulars  of 
the  objections,  (if  any,)  shall  be  referred  to  the  law  officer 
to  whom  the  original  application  had  been  referred. 

98.  LAW  OFFICER  TO  DECREE  COST  AND  BY  WHOM  PAID. 
The  law  officer,  in  case  of  objection,  is  to  order  the  costs 
incurred  thereby  to  be  paid  by  such  person  as  he  shall 
fix,  and  has  power  to  enforce  payment.     (§§  13,  14.) 

99.  LAW   OFFICER    MAY  .  THEN   ISSUE  WARRANT    FOR 
SEALING  PATENT. — After  such  hearing,  the  law  officer 
may  issue  a  warrant,  sealed  with  the  Commissioners' 
seal,  for  sealing  the  letters  patent,  setting  forth  their 


GREAT  BRITAIN  AND  IRELAND.  91 

tenor  and  effect,  and  directing  the  insertion  of  such 
restrictions  and  conditions  as  he  may  deem  proper  pur- 
suant to  the  act.  (§  15.) 

100.  PROVISION  INSERTED  THAT  COMPLETE  SPECIFICA- 
TION SHALL  BE  FILED  WITHIN  Six  MONTHS. — A  provision  is 
to  be  inserted  in  all  letters  patent,  in  respect  whereof  a 
provisional  and  not  a  complete  specification  shall  be  left 
on  the  application  for  the  same,  requiring  the  specifica- 
tion to  be  filed  within  six  months  from  the  date  of  appli- 
cation.    (2d  Set  of  Rules,  Oct.  15,- 1852.) 

101.  PATENT  FEE  £5,  AND  STAMP  £5. — The  fee  for  the 
law  officer's  warrant  is  £5,  and  the  stamp  on  letters 
patent  is  also  £5.     (Schedule  of  Act.) 

102.  LETTERS  PATENT  VOID  IF  BEFORE  EXPIRY  OF  THREE 
YEARS  £50  BE  NOT  PAID,  AND  IF  BEFORE  EXPIRY  OF  SEVEN 
YEARS  £100  BE  NOT  PAID. — Letters  patent  thus  granted 
shall  be  subject  to  the  condition  of  becoming  void,  unless 
before  the  expiration  of  three  years  a  further  fee  of  £40 
and  a  stamp  duty  of  £10  (in  all  £50)  be  paid,  and  unless 
before  the  expiration  of  seven-  years  a  further  fee  of  £80 
and  stamp  duty  of  £20  (in  all  £100)  be  paid.     Memo- 
randa of  such  payments  shall  be  indorsed  on  the  war- 
rant for  the  letters  patent,  and  a  certificate  of  the  same 
given,  and  also  indorsed  on  the  letters  patent. 

103.  ISSUE  OF  LETTERS  PATENT,  THEIR  EXTENT  AND 
LIMIT. — The  Commissioners,  when  required  by  the  appli- 
cant, shall  then  cause  letters  patent  to  be  prepared  ac- 
cording to  the  warrant,  which  shall  be  sealed  with  the 
great  seal  of  the  United  Kingdom.     Such  letters  patent 
shall  extend  to  the  whole  of  England,  Scotland,  and  Ire- 
land, to  the  Channel  Islands,  and  to  the  Isle  of  Man. 
Should  the  warrant  so  direct,  the  letters  patent  may  also 


92  FOREIGN  PATENT  LAWS. 

apply  to  any  colonies  or  plantations  abroad  which  may 
be  specified.  But  they  will  have  no  authority  in  any 
colonies  where  the  law  in  force  in  such  colonies  would 
render  them  invalid.  A  transcript  of  the  letters  patent 
is  to  be  transmitted  to  the  director  of  chancery  in  Scot- 
land, which  transcript  is  to  be  received  in  evidence  in 
all  Scottish  courts  of  law.  (§  18.) 

104.  MUST  BE  ISSUED  WITHIN  THREE  MONTHS  FROM 
WARRANT,  AND  DURING  PROVISIONAL  PROTECTION,  UNLESS 
DELAYED  BY  CAVEAT. — Patents  cannot  be  issued  unless 
applied  for  within  three  months  from  the  date  of  the 
warrant,  and  during  the  six  months  of  provisional  pro- 
tection or  complete  specification,  unless  delayed  by  a 
caveat,  or  application  to  the  Lord  Chancellor  against 
sealing  the  letters  patent.     In  such  case  they  may  be 
sealed  at  such  time  as  the  Lord  Chancellor  may  direct. 
(See  Instruction  41,  §§  19,  20.) 

105.  BUT    LORD    CHANCELLOR    MAY  ALLOW    MONTH'S 
LIMIT  IF  DELAY  BE  PURELY  ACCIDENTAL. — But  by  the 
sixth  clause  of  the  act  of  the  16  and  17  Viet.,  ch.  115, 
the  Lord  Chancellor  may  seal  letters  patent  after  the 
expiration  of  provisional  protection,  provided  the  delay 
in  such  sealing  has  arisen  from  accident,  and  not  from 
the  neglect  or  willful  default  of  the  applicant,  the  sealing 
to  be  dated  as  of  any  day  before  the  expiring  of  provis- 
ional protection,  and  in  like  manner  he  may  extend  the 
time  for  filing  the  specification;  such  extension,  how- 
ever, is  not  to  exceed  one  month. 

106.  IN  CASE  OF  DEATH  PATENT  GRANTED  TO  REPRE- 
SENTATIVES WITHIN  THREE  MONTHS. — In  case  of  the  death 
of  the  applicant  during  the  period  of  protection,  letters 
patent  may  be  granted  to  the  personal  representatives 


GREAT  BRITAIN  AND  IRELAND.  93 

during  such  period,  or  within  three  months  of  the  death 
of  the  applicant.     (§  21.) 

107.  IF  LOST,  NEW  PATENT  MAY  ISSUE  ACCORDING  TO 
COMMISSIONERS'  REGULATIONS. — In  case  letters  patent  he 
lost  or  destroyed,  others  of  like  effect  may  be  issued, 
subject  to  such  regulations  as  the  Commissioners  may 
make.     (§  22.) 

108.  DATE>  OF  LETTERS  PATENT. — Letters  patent  are  to 
be  dated  as  of  the  day  of  the  application  for  the  same, 
and  if  bearing  date  prior  to  the  day  of  actual  sealing, 
are  to  be  equally  valid.     (§§  23,  24.) 

109.  PATENTS  FOR  FOREIGN  INVENTIONS  EXPIRE  WITH 
ORIGINAL  FOREIGN  PATENT. — Patents  for  foreign  inven- 
tions, previously  patented  abroad,  shall  only  continue  in 
force  iu  the  United  Kingdom  as  long  as  they  shall  be 
valid  in  the  foreign  country  where  the  patent  is  already 
obtained,  and  where  more  than  one  patent  is  taken  out 
abroad,  the  termination  of  the  British  patent  shall  take 
place  when  the  first  of  such  foreign  patents  shall  expire. 
(§  25.) 

110.  PATENTS  NOT  TO  PREVENT  FOREIGN  SHIPS  USING 
THE  INVENTION. — Letters  patent  granted  under  this  act 
shall  not  prevent  the  use  of  the  invention  thereby  se- 
cured on  board  of  foreign   ships   resorting  to  British 
ports,  except  when  the  government  to  which  such  ships 
belong  shall  forbid  the  use  by  British  ships  of  foreign 
patented  inventions.     (§  26.) 

111.  SPECIFICATIONS  TO  BE  FILED  WITH  COPY  OF  DRAW- 
INGS.— Specifications  are  to  be  filed  at  the  office  with  an 
extra  copy  of  any  drawings.     (§§  27,  28.)    But  by  the 
16  and  17  Viet.,  ch.  115,  a  true  copy  of  every  speci- 
fication and  complete  specification,  with  the  drawings 


94  FOREIGN  PATENT  LAWS. 

accompanying  them,  are  to  be  left  at  the  office  on  filing 
such  specification  or  complete  specification. 

112.  SIZE  OF  SPECIFICATIONS. — All   specifications,  in 
pursuance  of  the  conditions  of  letters  patent,  and  all 
complete  specifications  accompanying  petitions  for  the 
grant  of  letters  patent,  shall  be   respectively  written 
bookwise  upon  a  sheet  or  sheets  of  parchment,  each  of 
the  size  of  twenty-one  and  a  half  inches  long  by  four- 
teen and  three-quarter  inches  broad.     The  same  may  be 
written  on  both  sides  of  the  sheet,  but  a  margin  must 
be  left  of  one  and  a  half  inch  on   every  side  of  each 
sheet. 

113.  SIZE  OF  DRAWINGS  AND   SCALE. — The   drawings 
accompanying  such  specifications  shall  be  on  a  sheet  or 
sheets  of  parchment,  each  twenty-one  and  a  half  inches 
long  by  fourteen   and  three-quarter  inches  broad,  or 
twenty-one   inches  broad  by  twenty-nine   and   a  half 
inches  long,  with  a  margin  of  one  and  a  half  inch  on 
every  side  of  each  sheet. 

[It  is  recommended  to  applicants  and  patentees  to 
make  their  elevation  drawings  according  to  the  scale  of 
one  inch  to  a  foot.  Lord  Chancellor's  order,  October  1, 
1852.] 

114.  EXTRA  COPY  OF  SPECIFICATION  TO  BE  LEFT  WITH 
ORIGINAL;  SIZE,  &c. — An  extra  copy  of  the  provisional 
specification  or  complete  specification  is  to  be  left  at  the 
office  with  the  original.     It  is  to  be  written  on  sheets  of 
brief  or  foolscap  paper,  briefwise,  and  on  one  side  only. 
The  extra  copy  of  drawings  must  be  according  to  the 
directions  given  above.     (See  Instruction  36.)     (3d  Set 
of  Rules,  Dec.  12,  1853.) 

115.  DOCUMENTS  TO  BE  LEGIBLY  SIGNED. — All  specifica- 


GREAT  BRITAIN  AND  IRELAND.  95 

tions,  copies  of  specifications,  provisional  specifications, 
petitions,  notices,  and  other  documents  left  at  the  office 
of  the  Commissioners,  and  the  signatures  of  petitioners 
or  agents,  must  be  written  in  a  large  and  legible  hand. 


116.  NOTICE  TO  PROCEED  MUST  BE  GIVEN  EIGHT  WEEKS, 
AND  APPLICATION  FOR  WARRANT  TWELVE  CLEAR  DAYS 

BEFORE  END  OF  PROVISIONAL   PROTECTION.  —  The  notice  of 

the  applicant  to  proceed  for  letters  patent  must  be  left 
at  the  office  eight  weeks  at  least  before  the  expiration  of 
the  provisional  protection,  and  the  application  for  the 
warrant  of  the  law  officer  and  for  the  letters  patent 
must  be  made  at  the  office  twelve  clear  days  at  least 
before  the  expiration  of  the  provisional  protection.  But 
the  Lord  Chancellor  reserves  to  himself  the  power  to 
grant  a  further  extension  of  time  under  the  special  cir- 
cumstances provided  for  by  the  6th  §  of  the  16  and  17 
Viet.,  ch.  115.  (See  Instruction  29,  ib.} 

117.  PROVISIONAL  SPECIFICATIONS,  AFTER  Six  MONTHS, 

AND  ALL  OTHER  DOCUMENTS  OPEN  FOR   PUBLIC  INSPECTION. 

True  copies  of  provisional  specifications,  after  the  expira- 
tion of  six  months,  and  of  all  other  specifications,  dis- 
claimers, and  memoranda  of  alterations,  are  to  be  open 
to  public  inspection  at  the  offices  in  London,  Edinburgh, 
and  Dublin. 

118.  DOCUMENTS  TO  BE  PRINTED  AND  SOLD  AND  INDEXES 
OPEN  FOR  PUBLIC  INSPECTION.  —  Specifications,  disclaim- 
ers, and  memoranda  of  alterations  are  to  be  printed  and 
sold  at  such  prices  as  the  Commissioners  shall  direct. 
[This  price  is  fixed  by  the  Commissioners'  rules  at  two- 
pence for  every  ninety  words.]     Indexes  of  all  patents 
and  documents  relating  thereto  are  also  to  be  prepared, 


96  FOREIGN  PATENT  LAWS. 

and  to  be  open  for  public  inspection  and  for  sale,  and 
printed  copies  of  patents  and  other  documents  are  to  be 
received  as  evidence  in  courts  of  law.  (§§  30,  32,  33.) 

119.  PRINTED    OR    MANUSCRIPT    COPIES,    &c.,    WITH 
COMMISSIONERS'  SEAL,  AND  DOCUMENTS   EECORDED   AND 
FILED,  EVIDENCE  IN  COURTS  OF  LAW. — Bat  by  the  4th 
§  of  the  16  and  17  Viet.,  ch.  115,  it  is  declared  that 
printed  or  manuscript  copies,  or  extracts  certified  and 
sealed  with  the  seal  of  the  Commissioners,  specifications, 
disclaimers,  and  all  other  documents  recorded  and  filed 
at  the  office,  are  to  be  received  as  evidence  in  all  the 
courts  of  the  United  Kingdom,  and  other  places  to  which 
the  patent  shall  extend,  without  the  production  of  the 
originals. 

120.  CHRONOLOGICAL  REGISTER  OF  DOCUMENTS  TO  BE 
KEPT,  INCLUDING  LICENSES  ;  COPY  OF  LICENSE  MAY  BE  HAD, 
SUCH  COPY  TO  BE  EVIDENCE. — A  chronological  register  of 
patents  and  other  documents  shall  be  kept  and  be  open 
to  public  inspection,  and  also  a  register  of  proprietors,  to 
include  the  assignment  of  any  patent  or  share  thereof, 
any  license  under  letters  patent,  with  the  district  to  which 
such  license  relates,  and  any  other  matter  affecting  the 
proprietorship  of  letters  patent;  and  a  copy  of  such  entry, 
properly  certified,  shall  be  given  to  any  applicant  on  pay- 
ment of  a  fee,  the  copy  to  be  evidence.     Until  such  entry 
shall  have  been  made,  the  grantee  of  the  patent  is  to  be 
considered  the  sole  proprietor.     Copies  of  the  registers 
are  to  be  kept  at  Edinburgh  and  Dublin.     (§§  34,  35.) 

121.  ANY  NUMBER  OF  PERSONS  MAY  BE  INTERESTED  IN 
A  PATENT. — A  larger  number  than  twelve  may  have  a 
legal  interest  in  a  patent.     (§  36.) 

122.  FALSIFICATION  OF  REGISTER  A  MISDEMEANOR. — 


GREAT  BRITAIN  AND  IRELAND.  97  ' 

Falsification  of  the  register  of  proprietors  is  a  misde- 
meanor.    (§  37.) 

1 123.  ENTRIES  IN  REGISTER  MAY  BE  EXPUNGED  BY 
JUDGE'S  ORDER. — Entries  in  the  registry  of  proprietors 
may  be  expunged  by  application  to  Master  of  the  Rolls, 
or  any  common  law  court.  The  costs  of  such  applica- 
tion to  be  paid  as  the  judge  shall  decree.  (§  38.) 

124.  DISCLAIMERS. — The  provisions  of  the  5  and  6  Wm. 
.IV,  ch.  83,  and  7  and  8  Viet.,  ch.  69,  relating  to  disclaim- 
ers and  memoranda  of  alterations  in  letters  patent  and 
specifications,  to  apply  to  this  act,  except  as  hereafter 
provided.  By  the  common  law,  letters  patent  became 
wholly  void  for  any  partial  defect;  for  instance,  the  want 
of  novelty  in  a  very  small  part.  The  act  of  5  and  6 
Wm.  IV,  ch.  83,  allows  a  patentee  to  put  in  a  disclaimer 
of  any  part  of  either  the  title  or  specification,  stating  the 
reason  for  such  disclaimer,  or  enter  a  memorandum  of 
alteration;  but  any  other  person  may  enter  a  caveat 
against  such  disclaimer  or  memorandum  of  alteration, 
the  caveat  giving  the  objector  a  right  to  be  heard  in  op- 
position to  the  disclaimer  or  alteration.  In  case  of  no 
opposition,  or  of  the  disallowance  of  any  caveat,  the  dis- 
claimer or  memorandum  of  alteration  may  be  filed  and 
enrolled,  and  be  deemed  part  of  the  letters  patent  and 
specification.  (§  39.)  But  the  disclaimer  or  alteration 
is  not  to  affect  any  action  pending  at  the  time,  and  the 
law  officer  to  whom  the  case  shall  be  referred  may  re- 
quire the  party  applying  to  advertise  such  disclaimer  or 
alteration.  (Ib.}  The  7  and  8  Viet,  allows  a  patentee 
the  same  faculty  of  disclaimer  or  alteration  in  concert 
with  any  party  to  whom  he  may  have  wholly  or  in  part 
transferred  a  property  in  his  patent. 
9 


98  FOREIGN  PATENT  LAWS. 

125.  CONFIRMATION  AND  PROLONGATION  OF  A  PATENT. 
The  provisions  of  the  5  and  6  Wm.  IV,  ch.  83,  and  the 
2  and  3  Viet,  ch.  67,  and  the  7  and  8  Viet.,  ch.  69,  as  to 
confirmation  and  prolongation  of  patents,  are  to  apply 
to  patents  under  this  act.     The  new  letters  patent  are 
to  be  available  only  for  such  places  as  the  original  pat- 
ent extended  to,  and  are  to  bear  date  on  the  day  after 
the  expiration  of  the  term  of  the  original  letters  patent. 
(§  40.)     The  fourth   section  of  the  act  of  William  en- 
acts, that  any  patentee  may  advertise  three  times  in  the 
London  Gazette,  and  in  three  London  papers,  and  three 
times  in  some  country  paper,  of  or  near  the  town  where 
he  may  reside  or  carry  on  his  manufacture,  (or  in  some 
paper  published  in  the  county  where  he  carries  on  his 
manufacture  or  lives,  in  case  there  should  be  no  paper 
in  the  town,)  his  intention  to  petition  the  Privy  Council 
for  a  prolongation  of  his  patent,  and  that  any  other  per- 
son may  enter  a  caveat  at  the  council's  office.     There- 
upon the  case  may  be  heard  before  the  judicial  commit- 
tee of  the  Privy  Council,  and  should  the  report  of  the 
committee  be  in  favor  of  the  patentee,  the  patent  may 
be  prolonged  for  seven  years.     The  second  section  of  the 
2  and  3  Viet.,  ch.  67,  allows  a  patentee  to  obtain  an  ex- 
tension of  his  patent,  though  the  application  for  such 
extension   may  not  have  been   prosecuted  with  effect 
before  the  expiration  thereof.     But  the  petition  must  be 
presented  six  calendar  months  at  least  before  the  expi- 
ration of  the  original  patent.     The  second  section  of  the 
7  and  8  Viet,,  ch.  69,  extends  the  term  for  which  a  pat- 
ent may  be  prolonged  to  fourteen  years. 

126.  INFRINGEMENT. — In  actions  for  infringement  of 
patents  the  plaintiff  is  to  deliver  with  his  declaration  the 


GREAT  BRITAIN  AND  IRELAND.  99 

particulars  of  the  breaches  complained  of,  and  the  de- 
fendant shall  also  deliver  with  his  pleas  particulars  of  any 
objection  on  which  he  means  to  rely,  and  at  the  trial  no 
evidence  shall  be  allowed  not  contained  in  such  particu- 
lars. Similar  particulars  are  obligatory  on  any  prosecu- 
tor seeking  to  repeal  the  patent.  The  prosecutor  must 
also  particularize  the  place  or  places  where,  and  the  man- 
ner in  which,  the  invention  is  alleged  to  have  been  used 
prior  to  the  date  of  the  letters  patent.  But  the  judge 
may  allow  the  plaintiff,  defendant,  or  prosecutor  to  amend 
his  particulars.  The  defendant,  in  any  suit  for  repealing 
his  patent,  has  a  right  to  begin  and  give  evidence  of  his 
case,  and  be  entitled  to  reply.  (§  41.) 

127.  JUDGE'S  ORDER  IN  CASE  OF  INFRINGEMENT. — The 
judge  of  any  court  where  an  action  may  be  brought  for 
infringement  of  patent  to  make  order  for  injunction, 
inspection,  or  account,  and  give  such  directions  respect- 
ing the  action,  &c.,  as  the  court  or  judge  may  see  fit. 
(§  42.) 

128.  TAKING  COSTS  IN  CASE  OF  INFRINGEMENT. — In  tax- 
ing costs  in  actions  for  infringement  regard  is  to  be  had 
to  the  particulars  delivered  in  such  actions,  and  costs  are 
only  to  be  allowed  on  such  particulars  as  the  judge  may 
certify  to.     Other  enactments  are  also  made  respecting 
taxed  costs.     (§  43.) 

129.  SCHEDULES  OF  FEES  AND  STAMP  DUTIES. — Fees  and 
stamp  duties  are  to  be  paid  according  to  schedule  annexed 
to  the  act.     The  stamp  duties  are  to  be  under  the  man- 
agement of  the  Commissioners  of  Inland  Revenue,  and 
the  fees  to  be  paid  into  the  Exchequer,  and  form  part  of 
the  consolidated  fund.     (§§  44,  45,  46.) 


100  FOREIGN  PATENT  LAWS. 

,  \ 

SCHEDULE  TO  WHICH  THE  ACT  REFERS,  CONSOLIDATED. 

£      s.   d. 

On  leaving  the  petition  for  grant  of  letters  patent 500 

On  notice  of  intention  to  proceed  with  the  application 500 

On  warrant  of  law  officer  for  letters  patent 500 

On  sealing  of  letters  patent 500 

On  filing  specifications 500 

At  or  before  expiration  of  the  third  year 50    0    0 

At  or  before  expiration  of  the  seventh  year 100    0     0 

On  leaving  notice  of  objections 200 

Every  search  and  inspection 010 

Entry  of  assignment  or  license 059 

Certificate  of  assignment  or  license 005 

Filing  application  for  disclaimer 500 

Caveat  against  disclaimer 200 

The  fees  to  be  paid  to  the  law  officers  and  to  their 
clerks  shall  be — 
By  a  person  opposing  a  grant  of  letters  patent: 

£    s.   d. 

To  the  law  officer 2  12    6 

To  his  clerk 0  12    6 

To  his  clerk  for  summons....  050 


•      £3  10    0 

By  the  petitioner  on  the  hearing  of  the  case  of  oppo- 
sition : 

£    s.   d. 

To  the  law  officer 2  12    6 

To  his  clerk , 0  12    6 

To  his  clerk  for  summons...,  050 


£3  10    0 


By  the  petitioner  for  the  hearing,  previous  to  the  fiat 
of  the  law  officer  allowing  a  disclaimer  or  memorandum 
of  alteration  in  letters  patent  or  specification : 


GREAT  BRITAIN  AND  IRELAND.  101 

£  s.    d. 

To  the  law  officer 2  12    6 

To  his  clerk...  ,     0  12    6 


£350 

By  the  person  opposing  the  allowance  of  such  dis- 
claimer or  memorandum  of  alteration  on  the  hearing 
of  the  case  of  opposition. 

£   s.    d. 
To  the  law  officer 2  12     6 

To  his  clerk..  .     0  12     6 


£350 

By  the  petitioner  for  the  fiat  of  the  law  officer  allow- 
ing a  disclaimer  or  memorandum  of  alteration,  or  letters 
patent  and  specification. 

£    s.   d. 

To  the  law  officer 330 

To  his  clerk...,  ,     0  12    6 


£3  15    6 

NOTE. — The  following  is  an  abstract  of  the  compara- 
tive cost  of  patents  in  the  principal  foreign  States  in 
British  currency: 

France,  £4  per  annum  for  fourteen  years. 
Great  Britain,  (provisional  protection,)  £5. 

Sealed,  £25. 

At  the  end  of  three  years,  £50  additional. 

At  end  of  seven  years,  £100  additional. 
Belgium,  8s.  first  year,  and  increasing  progressively  for  twenty  years  tip 

to  £8  for  last  year. 
Austria,  £10  for  first  five  years. 

£20  for  second  five  years. 

£40  for  third  five  years. 
9* 


102 


FOREIGN  PATENT  LAWS. 


Italy,'  8s.  4:d.  per  year,  paid  at  once. 

£1  12s.  per  annum  first  three  years. 

£2  12s.  per  annum  second  three  years. 

£3  12s.  per  annum  third  three  years. 

£4  12s.  per  annum  fourth  three  years. 

£5  12s.  per  annum  fifth  three  years. 
Saxony,  £4  10s.  for  first  five  years. 

£8  for  second  five  years. 

Sweden,  fees  not  fixed,  and  expenses  of  advertising. 
Victoria,  (Australia,)  £7  4s.  Qd.  for  first  three  years. 
Prussia,  £20  and  upwards  from  six  months  to  fifteen  years. 
Bavaria,  £2  for  first  year,  increasing  by  degrees  annually  to  £23  for  fifteen 

years. 
Netherlands,  £12  10s.  for  five  years. 

From  £25  to  £33  for  ten  years. 

From  £50  to  £62  for  fifteen  years. 
Eussia,  £14  10s.  for  three  years. 

£24  10s.  for  five  years. 

£72  10s.  for  ten  years. 


VIII.  Forms  and  Proceedings  to  obtain  a  Patent. 


SEC. 

130.  Form  of  petition. 

131.  How  to  be  written,  and  stamp. 

132.  Declaration  to  accompany  peti- 

tion. 

133.  Petition   and  declaration,   ac- 

companied by  specification. 

134.  Reference  indorsed  on  petition. 

135.  Form  provisional  specification. 


SEC. 

136.  Form  of  complete  specification. 

137.  Reference  to  law  officer. 

138.  Notice  to  proceed  to  be  made 

two  months   before  end  of 
provisional  term. 

139.  Form  of  warrant. 

140.  Form  of  letters  patent. 

141.  The  specification. 


130.  FORM  OF  PETITION  FOR  LETTERS  PATENT. — 

No.—. 
To  the  Queen's  Most  Excellent  Majesty 

The  humble  petition  of  ,  of  ,  in  the  county 

of  ,  showeth — 

That  your  petitioner  is  in  possession  of  an  invention  for  [here  insert  the 


GREAT  BRITAIN  AND  IRELAND.  103 

title  of  the  invention,]  which  invention  he  believes  will  be  of  great  public 
utility  ;  that  he  is  the  first  and  true  inventor  thereof,  [if  the  invention  be  a 
communication  from  abroad,  here  insert  the  words,  "within  the  realm,"] 
and  that  the  same  is  not  in  use  [if from  abroad,  insert  the  word  "therein  "] 
by  any  other  person  or  persons,  to  the  best  of  his  knowledge  and  belief. 
Your  petitioner  therefore  humbly  prays  that  your  Majesty  will  be  pleased 
to  grant  unto  him,  his  executors,  administrators,  and  assigns,  your  royal 
letters  patent,  for  the  United  Kingdom  of  Great  Britain  and  Ireland,  the 
Channel  Islands,  and  the  Isle  of  Man,  for  the  term  of  fourteen  years,  pur- 
suant to  the  statutes  in  that  case  made  and  provided. 
And  your  petitioner  will  ever  pray. 

131.  How  TO  BE  WRITTEN,  AND  STAMP. — This  petition 
must  be  written  distinctly,  or  printed,  on  a  £5  stamp, 
specially  provided  for  the  purpose  by  the  Stamp  Office, 
and  care  must  be  taken  to  conform  exactly  to  the  in- 
structions given  in  the  act,  respecting  the  dimensions, 
payments,  and  other  details. 

132.  DECLARATION  TO  ACCOMPANY  PETITION. — 

No.  — . 

I,  ,  of  ,  in  the  county  of  ,  do  solemnly 

and  sincerely  declare,  that  I  am  in  possession  of  an  invention  for,  &c.,  [the 
title  as  in  the  petition,]  which  invention  I  believe  will  be  of  great  public 
utility ;  that  I  am  the  true  and  first  inventor  thereof;  and  that  the  same 
is  not  in  use  by  any  other  person  or  persons,  to  the  best  of  my  knowledge 
and  belief,  [vihere  a  complete  specification  is  to  be  filed  with  the  petition  and 
declaration,  insert  these  words,  "and  that  the  instrument  in  writing  under 
my  hand  and  seal,  hereunto  annexed,  particularly  describes  and  ascertains 
the  nature  of  said  invention,  and  the  manner  in  which  the  same  is  per- 
formed ; "]  and  I  make  this  declaration  conscientiously,  believing  the  same 
to  be  true ;  and  by  virtue  of  the  provisions  of  an  act  made  and  passed  in 
the  session  of  Parliament,  held  in  the  fifth  and  sixth  years  of  the  reign  of 
his  late  Majesty  King  William  the  Fourth,  intituled  "An  act  to  repeal  an 
act  of  the  present  session  of  Parliament,  intituled  'An  act  for  the  more 
effectual  abolition  of  oaths  and  affirmations  taken  and  made  in  various 
departments  of  the  State,  and  to  substitute  declarations  in  lieu  thereof,  and 
for  the  more  entire  suppression  of  voluntary  and  extra-judicial  oaths  and 
affidavits,'  and  to  make  other  provisions  for  the  abolition  of  unnecessary 
oaths."  A.  B. 


104  FOREIGN  PATENT  LAWS. 

Declared  at  ,  this  day  of  ,  A.  D.  ,  before 

me,  = , 

A  Commissioner  to  Administer  Oaths  in  Chancery, 

or  Justice  of  the  Peace. 

133.  PETITION  AND  DECLARATION  MUST  BE  ACCOMPANIED 
BY  SPECIFICATION. — The  petition  and  declaration  must  be 
accompanied  by  either  a  provisional  specification  or  a 
complete  specification,  at  the  option  of  the  inventor.   A 
provisional  specification  need  only  give  the  general  prin- 
ciple of  the  invention,  but  it  must  be  stated  with  sufficient 
distinctness  to  enable  the  law  officer  to  whom  it  is  referred 
to  judge  of  the  nature  of  the  improvements  discovered, 
and  of  the  manner  in  which  they  are  to  be  carried  into 
effect.     The  inventor  will  then  have  an  interval  of  six 
months  for  maturing  his  invention,  and  may  introduce 
into  his  complete  specification  any  improvements  or  de- 
velopment not  inconsistent  with  the  title,  or  with  the 
principle  enounced  in  the  provisional  specification. 

134.  REFERENCE  TO  BE  INDORSED  ON  THE  PETITION. — 
The  following  is  to  be  indorsed  on  the  petition : 

"Her  Majesty  is  pleased  to  refer  this  petition  to  [name  of  law  officer,]  to 
consider  what  may  be  properly  done  therein." 

135.  FORM  OF  PROVISIONAL  SPECIFICATION. — 

No.—. 

I,  ,  do  hereby  declare  the  nature  of  the  said  invention  for 

[insert  title  as  in  petition]  to  be  as  follows  [here  insert  description]: 
Dated  this  day  of  ,  A.  D. 

[  To  be  signed  by  applicant  or  his  agent.] 

[It  will  be  for  the  inventor  to  judge  whether  it  will  be 
most  to  his  interest  to  content  himself  with  a  provisional 
specification  or  proceed  at  once  to  a  complete  specifica- 
tion ;  by  following  the  former  course  he  will  have  abund- 
ant leisure  to  perfect  his  discovery;  by  adopting  the  latter 
he  will  be  able  the  sooner  to  bring  it  into  commercial 


GREAT  BRITAIN  AND  IRELAND.  105 

operation,  a  point  worthy  of  consideration,  since  the  six 
months  of  provisional  protection  form  part  of  the  term 
for  which  the  patent  is  granted.] 

136.  FORM  OF  COMPLETE  SPECIFICATION. — 

To  all  to  whom  these  presents  shall  come : 

I,  ,  of  ,  send  greeting: 

Whereas  I  am  in  possession  of  an  invention  for  (here  insert  title),  and 
have  petitioned  Her  Majesty  to  grant  unto  me,  my  executors,  administra- 
tors, and  assigns,  her  royal  letters  patent  for  the  same,  and  have  made 
solemn  declaration  that  I  really  believe  myself  to  be  the  first  and  true 
inventor  thereof:  Now,  know  ye  that  I,  the  said  ,  do  hereby 

declare  that  the  following  complete  specification,  under  my  hand  and  seal, 
Tally  describes  the  nature  of  my  said  invention  and  the  manner  in  which 
the  same  is  to  be  performed  (that  is  to  say) :  [Here  in&ert  description.} 

Dateithis  day  of  ,  A.  D. 

[  To  be  signed  by  applicant  or  his  agent.] 

[The  drawing  up  of  the  complete  specification  is  an 
operation  which  requires  the  utmost  care,  skill,  and  at- 
tention on  the  part  of  the  person  undertaking  so  delicate 
a  duty,  for  the  validity  of  the  patent  will  depend  on  this 
document  being  clear,  explicit,  and  circumstantial.  Few 
inventors  will  venture  to  assume  a  task  which  is  calcu- 
lated to  try  the  capacity  and  experience  of  the  most  able 
professional  man.  "In  the  specification  the  invention 
must  be  accurately  ascertained  and  particularly  described ; 
it  must  be  set  forth  in  the  most  minute  detail.  The  dis- 
closure of  the  secret  is  considered  as  the  price  which  the 
patentee  pays  for  this  limited  monopoly,  and  therefore  it 
ought  to  be  full  and  correct,  (for  the  benefits  thus  secured 
to  him  are  great  and  certain,)  in  order  that  the  subject 
of  his  patent  may,  at  its  expiration,  b$  well  known,  and 
that  the  public  may  reap  from  it  the  same  advantages  as 
have  accrued  to  him."  (Godson  on  Patents,  ch.  iv.) 


106  FOREIGN  PATENT  LAWS. 

In  the  case  of  mechanical  inventions  drawings  are 
almost  always  necessary,  but  they  are  merely  intended" 
to  illustrate  the  description,  so  as  to  make  it  more  clearly 
understood;  but  the  law  requires  that  the  specification 
itself  should  be  so  explicit^  that  any  one  acquainted  with 
the  subject  should  be  able  to  carry  out  the  invention 
without  any  other  aid.  "Want  of  sufficient  exactness  in 
this  respect  would  therefore  be  a  ground  for  invalidating 
a  patent.] 

137.  REFERENCE  TO  LAW  OFFICER,  (EITHER  ATTORNEY 
OR  SOLICITOR  GENERAL  FOR  ENGLAND.) — Having  complied 
with  the  requirements  of  the  act  in  all  these  respects,  the 
application  is  then  referred  to  one  of  the  law  officers, 
(practically  either  the  Attorney  or  Solicitor  General  for 
England,)  and,  if  he  is  satisfied  with  the  accuracy  and 
propriety  of  the  description,  he  grants  a  certificate  of 
protection  for  six  months,  which  is  generally  published 
in  the  London  Gazette  on  the  Friday  after. 

138.  NOTICE  TO  PROCEED  TO  BE  ON  £5  STAMP,  AND  MADE 
Two  MONTHS  BEFORE  END  OF  PROVISIONAL  PROTECTION. — 
The  next  step  is  the  notice  to  proceed,  which  must  be 
on  a  £5  stamp,  and  be  deposited  at  the  office  at  least  two 
months  before  the  expiration  of  the  six  months'  protec- 
tion.    This  is  usually  published  in  the  ensuing  Tuesday's 
Gazette,  accompanied  by  a  notice,  "  that  all  parties  hav- 
ing an  interest  in  opposing  such  application  are  at  lib- 
erty to  leave  particulars  in  writing  of  their  objections  to 
such  application   at  the  office  of   the   Commissioners 
within  twenty-one  days  after  the  date  of  the  Gazette  in 
which  the  notice  is  issued."     Should  no  opposition  ap- 
pear within  this  period,  application  may  be  made  for  the 


GREAT  BRITAIN  AND  IRELAND.  107 

warrant  for  letters  patent.  This  must  be  done  at  least 
twelve  days  before  the  protection  expires.  The  warrant 
will  be  issued  in  due  course. 

139.  FORM  OF  WARRANT. — 

In  humble  obedience  to  Her  Majesty's  command,  referring  to^me  the 
petition  of  ,  of  ,  to  consider  what  may  be  properly 

done  therein,  I  do  hereby  certify  as  follows :  That  the  said  petition  sets 
forth  that  the  petitioner  [here  follow  the  allegations  of  the  petition],  and  the 
petitioner  prays  [prayer  of  the  petitioner] : 

That  in  support  of  the  allegations  contained  in  the  said  petition  the 
declaration  of  the  petitioner  has  been  laid  before  me,  whereby  he  solemnly 
declares  that  [here  follow  the  allegations  of  the  declaration] : 

That  there  has  also  been  laid  before  me  [a  provisional  specification, 

signed  ,  and  also  a  certificate  ,]  or  [a  complete 

specification,  and  a  certificate  of  the  filing  thereof],  whereby  it  appears 

that  the  said  invention  was  provisionally  protected  [or  protected]  from  the 

day  of  ,  A.  D.         ,  in  pursuance  of  the  statute. 

That  it  appears  that  the  said  application  was  duly  advertised. 

Upon  consideration  of  all  the  matters  aforesaid,  and  as  it  is  entirely  at 
the  hazard  of  the  said  petitioner  whether  the  said  invention  is  new  or  will 
have  the  desired  success,  and  as  it  may  be  reasonable  for  Her  Majesty  to 
encourage  all  arts  and  inventions  which  may  be  for  the  public  good,  I  am 
of  opinion  that  Her  Majesty  may  grant  her  royal  letters  patent  unto  the 
petitioner,  his  executors,  administrators,  and  assigns,  for  his  said  invention, 
within  the  United  Kingdom  of  Great  Britain  and  Ireland,  the  Channel 
Islands,  and  Isle  of  Man,  [colonies  to  be  mentioned,  if  any,]  for  the  term  of 
fourteen  years,  according  to  the  statute  in  that  case  made  and  provided,  if 
Her  Majesty  shall  be  graciously  pleased  so  to  do,  to  the  tenor  and  effect 
following :  [See  next  form.] 

Given  under  my  hand  this  day  of  ,  A.  D. 

140.  FORM  OF  LETTERS  PATENT. — 

Victoria,  by  the  grace  of  God  of  the  United  Kingdom  of  Great  Britain 
and  Ireland  Queen,  Defender  of  the  Faith : 
To  all  to  whom  these  presents  shall  come,  greeting: 

Whereas  hath  by  his  petition  humbly  represented  unto  us 

that  he  is  in  possession  of  an  invention  for  ,  which  the  peti- 

tioner conceives  will  be  of  great  public  utility ;  that  he  is  the  true  and  first 
inventor  thereof;  and  that  the  same  is  not  in  use  by  any  other  person  or 


108  FOREIGN  PATENT  LAWS. 

person's,  to  the  best  of  his  knowledge  and  belief.  The  petitioner  therefore 
most  humbly  prayed  that  we  would  be  graciously  pleased  to  grant  unto 
him,  his  executors,  administrators,  and  assigns,  our  royal  letters  patent  for 
the  sole  use,  benefit,  and  advantage  of  his  said  invention,  within  our  United 
Kingdom  of  Great  Britain  and  Ireland,  the  Channel  Islands,  and  Isle  of 
Man,  [colonies  to  be  mentioned,  if  any,]  for  the  term  of  fourteen  years,  pur- 
suant t<3  the  statutes  in  that  case  made  and  provided: 

[And  whereas  the  said  hath  particularly  described  and 

ascertained  the  nature  of  the  said  invention,  and  in  what  manner  the  same 
is  to  be  performed,  by  an  instrument  in  writing  under  his  hand  and  seal, 
and  has  caused  the  same  to  be  duly  filed  in  ] : 

And  we,  being  willing  to  give  encouragement  to  all  arts  and  inventions 
which  may  be  for  the  public  good,  are  graciously  pleased  to  condescend  to 
the  petitioner's  request:  Know  ye,  therefore,  that  we,  of  our  especial  grace, 
certain  knowledge,  and  mere  motion,  have  given  and  granted,  and  by  these 
presents,  for  us,  our  heirs  and  successors,  do  give  and  grant  unto  the  said 
,  his  executors,  administrators,  and  assigns,  our  especial  license, 
full  power,  sole  privilege  and  authority,  that  he,  the  said  ,  his 

executors,  administrators,  and  assigns,  and  every  of  them,  by  himself  and 
themselves,  or  by  his  and  their  deputy  or  deputies,  servants  or  agents,  or 
such  others  as  he,  the  said  ,  his  executors,  administrators,  or 

assigns,  shall  at  any  time  agree  with,  and  no  others,  from  time  to  time,  and 
at  all  times  hereafter  during  the  term  of  years  herein  expressed,  shall  and 
lawfully  may  make,  use,  exercise,  and  vend  his  said  invention  within  our 
United  Kingdom  of  Great  Britain  and  Ireland,  the  Channel  Islands,  and 
Isle  of  Man,  in  such  manner  as  to  him,  the  said  ,  his  executors, 

administrators,  and  assigns,  or  any  of  them,  shall  in  his  or  their  discretion 
seem  meet ;  and  that  he,  the  said  ,  his  executors,  administrators, 

and  assigns,  shall  and  lawfully  may  have  and  enjoy  the  whole  profit,  bene- 
fit, commodity,  and  advantage,  from  time  to  time  coming,  growing,  accru- 
ing, and  arising  by  reason  of  the  said  invention,  for  and  during  the  term 
of  years  herein  mentioned;  to  have,  hold,  exercise,  and  enjoy  the  said 
licenses,  powers,  privileges,  and  advantages,  hereinbefore  granted  or  men- 
tioned to  be  granted,  unto  the  said  ,  his  executors,  administrators, 
and  assigns,  for  and  during  and  unto  the  full  end  and  term  of  fourteen 
years  from  the  day  of  ,  A.  D.  ,  next  and  immediately 
ensuing,  according  to  the  statute  in  such  case  made  and  provided ;  and  to 
the  end  that  he,  the  said  ,  his  executors,  administrators,  and 
assigns,  and  every  of  them,  may  have  and  enjoy  the  full  benefit  and  the 
sole  use  and  exercise  of  the  said  invention,  according  to  our  gracious  inten- 


GREAT  BRITAIN  AND  IRELAND.  109 

tion  hereinbefore  declared,  we  do  by  these  presents,  for  us,  our  heirs  and 
successors,  require  and  strictly  command  all  and  every  person  and  persons, 
bodies  politic  and  corporate,  and  all  other  our  subjects  whatsoever,  of  what 
estate,  quality,  degree,  name,  or  condition  soever  they  be,  within  our  United 
Kingdom  of  Great  Britain  and  Ireland,  the  Channel  Islands,  and  Isle  of 
Man,  [colonies  to  be  mentioned,  if  any.]  that  neither  they  nor  any  of  them, 
at  any  time  during  the  continuance  of  the  said  term  of  fourteen  years 
hereby  granted,  either  directly  or  indirectly,  do  make,  use,  or  put  in*prac- 
tice  the  said  invention,  or  any  part  of  the  same,  so  attained  unto  by  the 
said  as  aforesaid,  nor  in  any  wise  counterfeit,  imitate,  or  resemble 

the  same,  nor  shall  make,  nor  cause  to  be  made,  any  addition  thereunto  or 
subtraction  from  the  same,  whereby  to  pretend  himself  or  themselves  the 
inventor  or  inventors,  deviser  or  devisers  thereof,  without  the  consent, 
license,  or  agreement  of  the  said  '  ,  his  executors,  administrators, 

or  assigns,  in  writing,  under  his  or  their  hands  and  seals,  first  had  and  ob- 
tained in  that  behalf,  upon  such  pains  and  penalties  as  can  and  may  be 
justly  inflicted  on  such  offenders  for  their  contempt  of  this  our  royal  com- 
mand, and  further  to  be  answerable  to  the  said  ,  his  executors, 
administrators,  and  assigns,  according  to  law,  for  his  and  their  damages 
thereby  occasioned. 

And,  moreover,  we  do  by  these  presents,  for  us,  our  heirs  and  successors, 
will  and  command  all  and  singular  the  justices  of  the  peace,  mayors,  sheriffs, 
bailiffs,  constables,  headboroughs,  and  all  other  officers  and  ministers  what- 
soever, of  us,  our  heirs  and  successors,  for  the  time  being,  that  they  or  any 
of  them  do  not,  nor  shall  at  any  time  during  the  said  term  hereby  granted, 
in  anywise  molest,  trouble,  or  hinder  the  said  ,  his  executors, 

administrators,  or  assigns,  or  any  of  them,  or  his  or  their  deputies,  servants, 
or  agents,  in  or  about  the  due  and  lawful  use  or  exercise  of  the  aforesaid 
invention  or  anything  relating  thereto :  Provided  always,  and  these  our 
letters  patent  are  and  shall  be  upon  this  condition,  that  if,  at  any  time 
during  the  said  term  hereby  granted,  it  shall  be  made  to  appear  to  us,  our 
heirs  or  successors,  or  any  six  or  more  of  our  or  their  Privy  Council,  that 
this  our  grant  is  contrary  to  law,  or  prejudicial  or  inconvenient  to  our  sub- 
jects in  general,  or  that  the  said  invention  is  not  a  new  invention  as  to  the 
public  use  and  exercise  thereof,  or  that  the  said  is  not  the  true 

and  first  inventor  thereof  within  this  realm  as  aforesaid,  these  our  letters 
patent  shall  forthwith  cease,  determine,  and  be  utterly  void,  to  all  intents 
and  purposes,  anything  hereinbefore  contained  to  the  contrary  thereof  in 
anywise  notwithstanding:  Provided  also  that  these  our  letters  patent,  or 
anything  herein  contained,  shall  not  extend  or  be  construed  to  extend  to 
10 


110  FOREIGN  PATENT  LAWS. 

give  privilege  unto  the  said  ,  his  executors,  administrators,  or 

assigns,  or  any  of  them,  to  use  or  imitate  any  invention  or  work  whatso- 
ever which  hath  heretofore  been  found  out  or  invented  by  any  other  of  our 
subjects  whatsoever,  and  publicly  used  or  exercised,  unto  whom  our  like 
letters  patent  or  privileges  have  been  already  granted  for  the  sole  use,  exer- 
cise, and  benefit  thereof:  It  being  our  will  and  pleasure  that  the  said 

,  his  executors,  administrators,  or  assigns,  and  all  and  every 
other  person  and  persons  to  whom  like  letters  patent  or  privileges  have 
been  already  granted  as  aforesaid,  shall  distinctly  use  and  practice  their 
several  inventions,  by  them  invented  and  found  out,  according  to  the  true 
intent  and  meaning  of  the  same  respective  letters  patent  and  of  these  pres- 
ents :  Provided  likewise,  nevertheless,  and  these  our  letters  patent  are  upon 
this  express  condition,  [that  if  the  said  shall  not  particularly 

describe  and  ascertain  the  nature  of  his  said  invention,  and  in  what  man- 
ner the  same  is  to  be  performed,  by  an  instrument  in  writing  under  his 
hand  and  seal,  and  cause  the  same  to  be  filed  in  within 

calendar  months  next  and  immediately  after  the  date  of  these  our  letters 
patent;]  [and  also  if  the  said  instrument  in  writing,  filed  as  aforesaid,  does 
not  particularly  describe  and  ascertain  the  nature  of  the  said  invention, 
and  in  what  manner  the  same  is  to  be  performed;]  and  also  if  the  said 

,  his  executors,  administrators,  or  assigns,  shall  not  pay  or  cause 
to  be  paid  at  the  office  of  our  Commissioners  of  Patents  for  inventions,  that 
is  to  say,  the  sum  of  £50  stamp  duty  before  the  expiration  of  three  years 
from  the  date  hereof,  and  also  £100  stamp  duty  before  the  expiration  of 
seven  years  from  the  date  of  these  our  letters  patent,  and  produce  these 
our  letters  patent  stamped  with  a  proper  stamp  to  these  amounts  respect- 
ively, pursuant  to  the  provisions  of  the  act  of  the  sixteenth  year  of  our 
reign,  chapter  5;  and  also  if  the  said  ,  his  executors,  adminis- 

trators, or  assigns,  shall  not  supply,  or  cause  to  be  supplied,  for  our  service 
all  such  articles  of  the  said  invention  as  he  or  they  shall  be  required  to 
supply  by  the  officers  or  commissioners  administering  the  department  of 
our  service  for  the  use  of  which  the  same  shall  be  required,  in  such  manner, 
at  such  times,  and  at  and  upon  such  reasonable  prices  and  terms,  as  shall 
be  settled  for  that  purpose  by  the  said  officers  or  commissioners  requiring 
the  same,  that  then,  and  in  any  of  the  said  cases,  these  our  letters  patent, 
and  all  liberties  and  advantages  whatsoever  hereby  granted,  shall  utterly 
cease,  determine,  and  become  void,  anything  hereinbefore  contained  to  the 
contrary  thereof  in  anywise  notwithstanding :  Provided  that  nothing  herein 
contained  shall  prevent  the  granting  of  licenses  in  such  manner  and  for 
such  considerations  as  they  may  by  law  be  granted  ;  and,  lastly,  we  do  by 


GREAT  BRITAIN  AND  IRELAND.  Ill 

these  presents,  for  us,  our  heirs  and  successors,  grant  unto  the  said  , 

his  executors,  administrators,  and  assigns,  that  these  our  letters  patent,  on 
the  filing  thereof,  shall  be  in  all  and  by  all  things,  good,  firm,  valid,  suffi- 
cient, and  effectual  in  the  law,  according  to  the  true  intent  and  meaning 
thereof,  and  shall  be  taken,  construed,  and  adjudged  in  the  most  favorable 
and  beneficial  sense  for  the  best  advantage  of  the  said  ,  his  exe- 

cutors, administrators,  and  assigns,  as  well  in  all  our  courts  of  record  as 
elsewhere,  and  by  all  and  singular  the  officers  and  ministers  whatsoever  of 
us,  our  heirs  and  successors,  in  our  United  Kingdom  of  Great  Britain  and 
Ireland,  the  Channel  Islands,  and  the  Isle  of  Man,  [colonies  to  be  mentioned, 
if  any,]  and  amongst  all  and  every  the  subjects  of  us,  our  heirs  and  suc- 
cessors, whatsoever  and  wheresoever,  notwithstanding  the  not  full  and  cer- 
tain describing  the  nature  or  quality  of  the  said  invention,  or  of  the  mate- 
rials thereunto  conducting  and  belonging.  In  witness  whereof  we  have 
caused  these  our  letters" to  be  made  patent,  this  day  of  , 

A.  D.  ,  and  to  be  sealed  and  bear  date  as  of  the  said  day  of 

,  A.  D.  ,  in  the  year  of  our  reign. 

141.  THE  SPECIFICATION. — Should  the  applicant  have 
preferred  in  the  first  instance  to  file  a  provisional  speci- 
fication, his  next  step  will  be  the  complete  specifica- 
tion. 

To  all  to  whom  these  presents  shall  come: 

I,  ,  of  ,  send  greeting: 

Whereas  Her  most  Excellent  Majesty  Queen  Victoria,  by  her  royal 
letters  patent,  bearing  date  the  day  of  ,  A.  D.  , 

in  the  year  of  her  reign,  did  for  herself,  her  heirs  and  successors, 

give  and  grant  unto  me,  the  said  ,  her  special  license,  that  I, 

the  said  ,  my  executors,  administrators,  and  assigns,  or  such 

others  as  I,  the  said  ,  my  executors,  administrators,  and  as- 

signs, should  at  any  time  agree  with,  and  no  others,  from  time  to  time,  and 
at  all  times  thereafter  during  the  term  therein  expressed^  should,  and 
lawfully  might,  make,  use,  exercise,  and  vend,  within  the  United  Kingdom 
of  Great  Britain  and  Ireland,  the  Channel  Islands,  and  the  Isle  of  Man, 
[the  colonies  to  be  mentioned  if,  any,]  an  invention  for  [insert  title  as  in  let- 
ters patent],  upon  the  condition  (amongst  others)  that  I,  the  said  , 
by  an  instrument  in  writing  under  my  hand  and  seal,  should  particularly 
describe  and  ascertain  the  nature  of  the  said  invention,  and  in  what  man- 
ner the  same  was  to  be  performed,  and  cause  the  same  to  be  filed  in 


112  FOREIGN  PATENT  LAWS. 

within  calendar  months  next  and  immediately  after  the 

date  of  the  said  royal  letters  patent:  Now,  know  ye  that  I,  the  said 
,  do  hereby  declare  the  nature  of  my  said  invention,  and  in  what 
manner  the  same  is  to  he  performed,  to  be  particularly  described  and 
ascertained  in  and  by  the  following  statement,  that  is  to  say:  [Describe 
the  invention.] 

In  witness  whereof  I,  the  said  ,  have  hereunto  set  my  hand 

and  seal,  this  day  of  ,  A.  D. 

[Signed  by  the  applicant.] 

This  will  complete  all  the  proceedings  necessary  for 
obtaining  a  patent  in  cases  where  no  opposition  is  made. 

Patentees  are  reminded  that  unless  before  the  expira- 
tion of  the  third  year  a  further  sum  of  £50,  and  before 
the  expiration  of  the  seventh  year  a  further  sum  of  £100, 
be  paid  at  the  Patent  Office,  the  letters  patent  will  be- 
come void. 


IX.  Patent  Laws  of  the  Dominion  of  Canada. 


SEC. 

142.  Patent  Office  constituted. 

143.  Seal. 

144.  Rules  and  regulations. 


SEC. 

145.  Deputy  Commissioner. 

146.  Eeport. 


[NOTE. — The  new  patent  law  of  the  Dominion  came  in 
force  on  the  1st  of  July,  1869,  and  abrogated  the  local 
provincial  laws  which  previously  to  that  time  had  been  in 
force  in  the  different  provinces.  Patents  granted  under 
those  late^laws  will,  however,  still  continue  in  force  in 
the  provinces  for  which  they  were  granted  for  the  unex- 
pired  periods  they  have  to  run.  It  will  also  be  seen 
that,  under  certain  conditions,  those  local  patents  may 
be  extended  over  the  entire  Dominion. 

Daring  the  passage  of  the  patent  bill  through  Parlia- 


DOMINION  OF  CANADA.  113 

ment  strong  efforts  were  made  to  obtain  a  more  liberal 
law  thai/  the  one  we  now  publish — a  law  which  would 
assimilate  with  those  of  other  civilized  countries,  in  not 
demanding  residence  as  a  necessary  preliminary  to  the 
application  for  a  patent,  and  also  in  extending  the  right 
of  a  patent  to  all  inventors,  irrespective  of  nationality. 
This  last  condition  was  carried,  but  the  first  failed.  Prior 
residence  of  one  year,  immediately  before  making  the 
application,  being  required,  but  without  reference  to  na- 
tionality of  the  inventor  or  applicant;  the  Government 
holding  out  a  promise  that  prior  residence  would  also  be 
dispensed  with  on  the  passage  of  the  reciprocity  treaty 
with  the  United  States,  then  in  contemplation.] 

142.  PATENT   OFFICE    CONSTITUTED. — There   shall  be 
attached  to  the  Department  of  Agriculture,  as  a  branch 
thereof,  an  office  to  be  named  the  Patent  Office;  and 
the  Minister  of  Agriculture  for  the  time  being  shall  be 
the  Commissioner  of  Patents  of  invention;  and  it  shall 
be  the  duty  of  the   said  Commissioner  to  receive  all 
applications,  fees,  papers,  documents,  and  models  for 
patents,  and  to  perform  such  acts  and  things  respecting 
the  granting  and  issuing  of  patents  for  new  and  useful 
inventions,  discoveries,  and  improvements  as  are  herein 
provided  for;  and  he  shall  have  the  charge  and  custody 
of  the  books,  records,  papers,  models,  machines,  and 
other  things  belonging  to  the  said  office.     (§  1.) 

143.  SEAL. — The  Commissioner  shall  cause  a  seal  to 
be  made  for  the  purpose*  of  this  act,  and  may  cause  to 
be  sealed    therewith   letters   patent  and   other   instru- 
ments and  copies  proceeding  from  the  Patent  Office; 
and  all  courts,  judges,  and  other  persons  whomsoever 

10* 


114  FOREIGN  PATENT  LAWS. 

shall  take  notice  of  such  seal,  and  receive  impressions 
thereof  in  evidence,  in  like  manner  as  impressions  of 
the  great  seal  are  received  in  evidence,  and  shall  also 
take  notice  of  and  receive  in  evidence,  without  further 
proof  and  without  production  of  the  originals,  all  copies 
or  extracts  certified  under  the  seal  of  the  said  office  to 
be  copies  of  or  extracts  from  documents  deposited  in 
such  office.  (§  2.) 

144.  RULES   AND   REGULATIONS. — The    Commissioner 
may  from  time  to  time,  subject  to  the  approval  of  the 
Governor  in  council,  make  such  rules  and  regulations,  and 
prescribe  such  forms,  as  may  appear  to  him  necessaiy 
and  expedient  for  the  purposes  of  this  act,  and  notice 
thereof  shall  be  given  in  the  Canada  Gazette;  and  all 
documents  executed  after  the   same   and  accepted  by 
the  Commissioner  shall  be  held  valid  so  far  as  relating 
to  proceedings  in  the  Patent  Office.     (§  3.) 

145.  DEPUTY  COMMISSIONER. — The  Deputy  of  the  Min- 
ister of  Agriculture  shall  be  the  Deputy  Commissioner 
of  Patents  of  Invention;  and  the  Governor  may  from 
time  to  time  appoint  such  clerks  and  officers  under  him 
as  may  be  necessary  for  the  purpose  of  this  act,  and  such 
clerks  and  officers  shall  hold  office  during  pleasure.    (§  4.) 

146.  REPORT. — The  Commissioner  shall  cause  a  report 
to  be  prepared  annually  and  laid  before  Parliament  of 
the  proceedings  under  this  act,  and  shall  from  time  to 
time,  and  at  least  once  in  a  year,  publish  in  the  Canada 
Gazette  a  list  of  patents   granted,  and  may,  with   the 
approval  of  the  Governor  in  tbouncil,  cause  such  speci- 
fications and  drawings  as  may  be  deemed  of  interest,  or 
essential  parts  thereof,  to  be  printed  from  time  to  time 
for  distribution  or  sale.     (§  5.) 


DOMINION  OF  CANADA. 


115 


X.  "WTio  may  Obtain  Patents. 


SEC. 

147.  Who  may  obtain  a  patent. 

148.  An  original  inventor,  having 

foreign  patent,  must  apply 
within  six  months. 

149.  Right  of  assignment. 


SEC. 

150.  A  resident  may  obtain,  but  not 

vend  a  patent. 

151.  Joint  applications  to  be  made 

by  joint  inventors,  and  pat- 
ents issue  accordingly.    • 


147.  WHO  MAY  OBTAIN  A  PATENT. — Any  person  having 
been  a  resident  of  Canada  for  at  least  one  year  next 
before  his  application,  and  having  invented  or  discov- 
ered any  new  and  useful  art,  machine,  manufacture,  or 
composition  of  matter,  or  any  new  and  useful  improve- 
ment on  any  art,  machine,  manufacture,  or  composition 
of  matter,  not  known  or  used  by  others  before  his  inven- 
tion or  discovery  thereof,  or  not  being  at  the  time  of  his 
application  for  a  patent  in  public  use  or  on  sale  in  any 
of  the  provinces  of  the  Dominion,  with  the  consent  or 
allowance  of  the  inventor  or  discoverer  thereof,  may,  on 
a  petition  to  that  effect  presented  to  the  Commissioner 
and  on  compliance  with  the  other  requirements  of  this 
act,  obtain  a  patent,  granting  to  such  person  an  exclus- 
ive property  therein ;  and  the  said  patent  shall  be  under 
the  seal  of  the  Patent  Office  and  the  signature  of  the 
Commissioner,  or  the  signature  of  another  member  of 
the  Privy  Council,  and  shall  be  good  and  valid  to  the 
grantee,  his  heirs,  assigns,  or  other  legal  representatives, 
for  the  period  mentioned  in  such  patent;  but  no  patent 
shall  issue  for  an  invention  or  discovery  having  an  illicit 
object  in  view,  nor  for  any  mere  scientific  principle  or 
abstract  theorem.  (§  6.) 


116  FOREIGN  PATENT  LAWS. 

148.  AN  ORIGINAL  INVENTOR,  HAVING  FOREIGN  PATENT, 
MUST  APPLY  WITHIN  Six  MONTHS. — An  original  and  true 
inventor  or  discoverer  shall  not  be  deprived  of  the  right 
to  a  patent  for  his  invention  or  discovery  by  reason  of 
his  having,  previously  to  his  application,  taken  out  a 
patent  therefor  in  any  other  country,  at  any  time  within 
six  months  next  preceding  the  filing  of  his  specification 
and  drawing,  as  required  by  this  act.    (§  7.) 

149.  RIGHT    OF    ASSIGNMENT. — The    patent    may   be 
granted  to  any  person  to  whom   the  inventor  or  dis- 
coverer entitled  under  the   sixth   section   to   obtain   a 
patent  has  assigned  or  bequeathed  the  right  of  obtain- 
ing the  same  and  the  exclusive  property  in  the  inven- 
tion or  discovery  in  Canada,  or,  in  default  of  such  as- 
signment or  bequest,  to  the  executor  or  administrator 
of  the  deceased  inventor  or  discoverer,  or  other  legal 
representative.     (§  8.) 

150.  A  RESIDENT  MAY  OBTAIN,  BUT  NOT  VEND^A  PATENT. 
Any  person,  having  been  a  resident  of  Canada  for  at 
least  one  year   next  before   his   application,  and  who 
has  invented  or  discovered  any  improvement  on  any 
patented  invention  or  discovery,  may  obtain  a  patent  for 
such  improvement,  but  shall  not  thereby  obtain  the  right 
of  vending  or  using  the  original  invention  or  discovery, 
nor  shall  the  patent  for  the  original  invention  or  discov- 
ery confer  the  right  of  vending  or  using  the  patented 
improvement.     (§  9.) 

151.  JOINT  APPLICATIONS  TO  BE  MADE  BY  JOINT  INVENT- 
ORS AND  PATENTS  ISSUE  ACCORDINGLY. — In  cases  of  joint 
applications,  the  patent  shall  be  granted  in  the  names 
of  all  the  applicants;  and  in  such  cases  any  assignment 
from  one  of  the  said  applicants  or  patentees  to  the  other 


DOMINION  OF  CANADA.  117 

shall  be  registered  in  the  manner  of  other  assignments. 
(§  10.) 

XI.  Conditions  and  Formalities. 


SEC. 

152.  Oath  or  affirmation  as  to  inven- 

tion must  be  made  by  appli- 
cants. 

153.  Applicants  to  elect  a  domicil  in 

Canada. 

154.  Nature  of  petition  and  specifi- 

cations. 


SEC. 

155.  Drawings   to   be  furnished  in 

duplicate,  with  references. 

156.  Working  model  of  invention,  or 

samples  of  ingredients,  if  a 
discovery,  required. 


152.  OATH  OR  AFFIRMATION  AS  TO  INVENTION  MUST  BE 
MADE  BY  APPLICANTS. — Every  applicant  for  a   patent, 
before  he  can   obtain  the  same,  shall  make  oath,  or, 
when  entitled  by  law  to  make  an  affirmation  instead 
of  an  oath,  shall  make  an  affirmation,  that  he  verily 
believes  that  he  is,  or  that  the  person  whose  assignee 
or  representative  he  is,  is  or  was  the  true  inventor  or 
discoverer  of  the  invention  or  discovery  for  which  the 
patent  is  solicited,  and  that  he,  or  the  person  whose 
assignee  or  representative  he  is,  was  a  resident  of  Can- 
ada for  one  year  next  before  the  application,  or,  in  case 
of  death  of  the   inventor  or  discoverer,  for  one  year 
next  before  such  death.     Such  oath  or  affirmation  may 
be  made  before  any  justice   of  the  peace  in  Canada; 
but  if  the  applicant  is  not  at  the  time  in  Canada,  the 
oath  or  affirmation  may  be  made  before  any  minister 
plenipotentiary,   charg'e.    d'affaires,   consul    or    consular 
agent,  holding  commission  under  the  Government  of 
the  United  Kingdom,  or  any  judge  of  the  country  in 
which  the  applicant  happens  at  the  time  to  be.     (§  11.) 

153.  APPLICANT  TO  ELECT  A  DOMICIL  IN  CANADA. — The 


118  FOREIGN  PARENT  LAWS. 

petitioner  for  a  patent  shall,  for  all  the  purposes  of 
this  act,  elect  his  domicil  at  some  known  and  speci- 
fied place  in  Canada,  and  mention  the  same  in  his 
petition  for  a  patent,  and  he  shall  in  the  same  petition 
state  the  place  or  places  in  Canada  at  which  he,  or,  if  his 
application  be  as  assignee  or  representative,  the  person 
whose  assignee  or  representative  he  is,  was  resident 
during  the  year  of  residence  required  by  this  act,  and 
the  period  of  residence  at  each  such  place.  (§  12.) 

154.  NATURE  OF  PETITION  AND  SPECIFICATIONS. — The 
applicant  shall  in  his  petition  for  a  patent  insert  the 
title  or  name  of  his  invention  or  discovery,  its  object, 
and  a  short   description   of  the   same,   and   shall   dis- 
tinctly allege  all  the  facts  which  are  necessary  under 
this  act  to  entitle  him  to  a  patent  therefor,  and  shall,  with 
the  petition,  send  in  a  written  specification,  in  duplicate, 
of  his   invention  or  discovery,  describing  the  same  in 
such  full,  clear,  and  exact  terms  as  to  distinguish  it  from 
all  contrivances  or  processes  for  similar  purposes.    (§  13.) 

155.  DRAWINGS  TO  BE  FURNISHED  IN  DUPLICATE,  WITH 
REFERENCES. — The  specification  shall  correctly  and  fully 
describe  the  mode  or  modes  of  operating  contemplated 
by  the  applicant,  and  shall  state  clearly  and  distinctly  the 
contrivances  and  things  which  he  claims  as  new,  and  for 
the  use  of  which  he  claims  an  exclusive  property  and 
privilege;  it  shall  bear  the  name  of  the  place  where  it  is 
made,  the  date,  and  be  signed  by  the  applicant  and  two 
witnesses.     In  the  case  of  a  machine,  the  specification 
shall  fully  explain  the  principle  and  the  several  modes  in 
which  it  is  intended  to  apply  and  work  out  the  same; 
in  the  case  of  a  machine,  or  in  any  other  case  where  the 
invention  or  discovery  admits  of  illustration  by  means 


DOMINION  OF  CANADA.  119 

of  drawings,  the  applicant  shall  also  with  his  applica- 
tion send  in  drawings  in  duplicate,  showing  clearly  all 
parts  of  the  invention  or  discovery,  and  each  drawing 
shall  bear  the  name  of  the  inventor  or  discoverer,  and 
shall  have  written  references  corresponding  with  the 
specification,  and  a  certificate  of  the  applicant  that  it  is 
the  drawing  referred  to  in  the  specification;  but  the 
Commissioner  may  require  any  greater  number  of  draw- 
ings than  those  above  mentioned,  or  dispense  with  any 
of  them,  as  he  may  see  fit;  one  duplicate  of  the  specifi- 
cation and  of  the  drawings,  if  any  drawings,  shall  be 
annexed  to  the  patent  of  which  it  forms  an  essential 
part,  and  the  other  duplicate  shall  remain  deposited  in 
the  Patent  Office.  (§  14.) 

156.  WORKING  MODEL  OF  INVENTION,  OR  SAMPLES  OF 
INGREDIENTS,  IF  A  DISCOVERY,  REQUIRED. — The  appli- 
cant shall  also  deliver  to  the  Commissioner,  unless 
specially  dispensed  from  so  doing  for  some  good  rea- 
son, a  neat  working  model  of  his  invention  or  discov- 
ery, on  a  convenient  scale,  exhibiting  its  several  parts 
in  due  proportion,  whenever  the  invention  or  discovery 
admits  of  such  model;  and  shall  deliver  to  the  Com- 
missioner specimens  of  the  ingredients  and  of  the 
composition  of  matter  sufficient  in  quantity  for  the  pur- 
pose of  experiment,  whenever  the  invention  is  a  compo- 
sition of  matter,  provided  such  ingredients  and  compo- 
sition are  not  of  an  explosive  character  or  otherwise 
dangerous,  in  which  case  they  are  to  be  furnished  only 
when  specially  required  by  the  Commissioner,  and  then 
with  such  precautions  as  shall  be  prescribed  in  the  said 
requisition.  (§  15.) 


120 


FOREIGN  PATENT  LAWS. 


XII.  Contents,  Duration,  Surrender,'  Reissue  of  Pat- 
ents, and  Disclaimers. 


SEC. 

157.  Contents   of    the    patent   and 

powers  granted  thereby. 

158.  Duration  -of  patent. 

159.  Patent  to  be  examined  and  cer- 


SEC. 

tified  by  minister  of  justice 
before  delivery. 

160.  New  patent  in  case  of  error. 

161.  Patentee  may  make  disclaimer. 


157.  CONTENTS  OP  THE  PATENT  AND  POWERS  GRANTED 
THEREBY. — Every  patent  granted  under  this   act  shall 
recite  briefly  the  substance  of  the  petition  on  which  it  is 
granted,,  and  shall  contain  the  title  or  name  of  the  in- 
vention or  discovery  and  a  short  description  of  the  same, 
referring  for  a  fuller  detail  to  the  specification,  and  shall 
grant  to  the  patentee,  his  assigns  and  legal  representa- 
tives, or  in  trust,  as  the  case  may  be,  for  the  period 
therein  mentioned  from  the  granting  of  the  same,  the 
exclusive  right,  privilege,  and  liberty  of  making,  con- 
structing, and  using,  and  vending  to  others  to  be  used, 
the  said  invention  or  discovery,  and  shall  contain  a  con- 
dition that  it  is  nevertheless  subject  to  adjudication  be- 
fore any  court  of  competent  jurisdiction.     (§  16.) 

158.  DURATION  OF  PATENT. — Patents  of  invention  or 
discovery  issued  by  the  Patent  Office  shall  be  valid  for  a 
period  of  five  years;  but  at  or  before  the  expiration  of 
the  said  five  years  the  holder  thereof  may  obtain  an 
extension  of  the  patent  for  another  period  of  five  years, 
and  after  those  second  five  years  may  again  obtain  fur- 
ther extension  for  another  period  of  five  years;  and  the 
instrument  delivered  by  the  Patent  Office  for  such  ex- 
tension of  time  shall  be  in  the  form  which  may  be  from 
time  to  time  adopted,  and  shall  be  made  in  duplicate, 


DOMINION  OF  CANADA.  121 

one  duplicate  to  remain  of  record  and  be  duly  registered, 
and  the  other  to  be  attached,  with  reference,  to  the  pat- 
ent, under  the  seal  of  the  Patent  Office  and  signature  of 
the  Commissioner,  or  any  other  privy  councillor  in  case 
of  absence  of  the  Commissioner.  (§  17.) 

159.  PATENT  TO  BE  EXAMINED  AND  CERTIFIED  BY  MIN- 
ISTER OF  JUSTICE  BEFORE  DELIVERY. — Every  such  patent, 
and  every  instrument  for  granting  a  further  extension  of 
any  patent,  shall,  before  it  is  signed  by  the  Commissioner 
or  any  other  member  of  the  privy  council,  and  before 
the  seal  hereinbefore  mentioned  is  affixed  to  it,  be  ex- 
amined by  the  Minister  of  Justice,  who,  if  he  finds  it 
conformable  to  law,  shall  certify  accordingly,  and  such 
patent  or  instrument  may  then  be  signed  and  the  seal 
affixed  thereto,  and,  being  duly  registered,  shall  avail  to 
the  grantee  thereof  and  be  delivered  to  him.     (§  18.) 

160.  IN  CASE  OF  ERROR  THE  COMMISSIONER  MAY  CAUSE 
NEW  PATENT  TO  BE  ISSUED. — AVhenever  any  patent  shall 
be  deemed  defective  or  inoperative  by  reason  of  insuffi- 
cient description  or  specification,  or  by  reason  of  the 
patentee  claiming  more  than  he  had  a  right  to  claim  as 
new,  but  at  the  same  time  it  appears  that  the  error  arose 
from   inadvertence,  accident,  or  mistake,  without  any 
fraudulent  or  deceptive  intention,  the  Commissioner  may, 
upon  the  surrender  of  such  patent  and  the  payment  of 
the  further  fee  hereinafter  provided,  cause  a  new  patent, 
in  accordance  with  an  amended  description  and  specifi- 
cation to  be  made  by  such  patentee,  to  be  issued  to  him 
for  the  same  invention  or  discovery,  for  any  part  or  the 
whole  of  the  then  unexpired  residue  of  the  five  years 
period  for  which  the  original  patent  was  or  might  have 
been,  as  hereinbefore  directed,  granted.     In  case  of  the 

11 


122  FOREIGN  PATENT  LAWS. 

death  of  the  original  patentee,  or  of  his  having  assigned 
the  patent,  a  like  right  shall  vest  in  his  assignee  or  legal 
representative:  The  new  patent  and  the  amended  de- 
scription and  specification  shall  have  the  same  effect  in 
law,  on  the  trial  of  any  action  thereafter  commenced  for 
any  cause  subsequently  accruing,  as  if  the  same  had  been 
originally  filed  in  such  corrected  form  before  the  issue 
of  the  original  patent.  (§  19.) 

161.  PATENTEE  MAY  MAKE  DISCLAIMER.— Similarly, 
whenever,  by  any  mistake,  accident,  or  inadvertence, 
and  without  any  willful  intent  to  defraud  or  mislead 
the  public,  a  patentee  has  made  his  specification  too 
broad,  claiming  more  than  that  of  which  he  or  the 
party  through  whom  he  claims  was  the  first  inventor 
or  discoverer,  or  has  in  the  specification  claimed  that  he 
or  the  party  through  whom  he  claims  was  the  first  in- 
ventor or  discoverer  of  any  material  or  substantial  part 
of  the  invention  or  discovery  patented,  of  which  he  was 
not  the  first  inventor  or  discoverer,  and  had  no  legal 
right  thereto,  the  patentee  may,  on  payment  of  the  fee 
hereinafter  provided,  make  disclaimer  of  such  parts  as 
he  shall  not  claim  to  hold  by  virtue  of  the  patent  or  the 
assignment  thereof;  such  disclaimer  shall  be  in  writing 
arid  in  duplicate,  and  attested  in  the  manner  hereinbe- 
fore prescribed  for  a  patent,  one  copy  to  be  filed  and 
recorded  in  the  office  of  the  Commissioner,  the  other 
copy  to  be  attached  to  the  patent  and  made  a  part  thereof 
by  reference,  and  such  disclaimer  shall  thereafter  be 
taken  and  considered  as  part  of  the  original  specification. 
Such  disclaimer  shall  not  affect  any  action  pending  at 
the  time  of  its  being  made,  except  in  so  far  as  may  relate 
to  the  question  of  unreasonable  neglect  or  delay  in  mak- 


DOMINION  OF  CANADA. 


123 


ing  it.  In  case  of  the  death  of  the  original  patentee,  or 
of  his  having  assigned  the  patent,  a  like  right  shall  vest 
in  his  assigns  or  legal  representatives  respectively,  any  of 
whom  may  make  disclaimer.  The  patent  shall  thereafter 
be  deemed  good  and  valid  for  so  much  of  the  invention 
or  discovery  as  is  truly  the  disclaimant's  own  and  not 
disclaimed,  provided  it  be  a  material  and  substantial  part 
of  the  invention  or  discovery,  and  definitely  distinguished 
from  other  parts  claimed  without  right;  and  the  dis- 
claimant  shall  be  entitled  to  maintain  a  suit  for  such 
part  accordingly.  (§  20.) ' 


XIII.  Assignment  and  Infringement  of  Patents. 


SEC. 

162.  Government  of  Canada  may  use 

any  patented  invention  by 
making  reasonable  compen- 
sation. 

163.  Patents  to  be  assignable. 


SEC. 

1Q4.  Penalty  for  infringement. 

165.  Prosecution  for  infringement. 

166.  Court  may  discriminate  in  cer- 

tain cases. 

167.  Defense  in  such  cases. 


162.  GOVERNMENT  OF  CANADA  MAY  USE  ANY  PATENTED 
INVENTION  BY  MAKING  REASONABLE  COMPENSATION. — The 
Government  of  Canada  may  always  use  any  patented 
invention  or  discovery,  paying  to  the  patentee  such  sum 
as  the  Commissioner  may  report  to  be  a  reasonable  com- 
pensation for  the  use  thereof.     (§  21.) 

163.  PATENTS  TO  BE  ASSIGNABLE. — Every  patent  for  an 
invention  or.  discovery,  whensoever  issued,  shall  be  assign- 
able in  law,  either  as  to  the  whole  interest  or  as  to  any 
part  thereof,  by  any  instrument  in  writing;  but  such 
assignment,  and  also  every  grant  and  conveyance  of  any 
exclusive  right  to  make  and  use,  and  to  grant  to  others 


124  FOREIGN  PATENT  LAWS. 

the  right  to  make  and  use,  the  invention  or  discovery 
patented,  within  and  throughout  the  Dominion  of  Canada, 
or  within  and  throughout  any  one  or  more  of  the  Prov- 
inces of  Ontario,  Quebec,  Nova  Scotia,  or  New  Bruns- 
wick, or  any  part  of  any  of  such  Provinces  or  of  the 
Dominion,  shall  be  registered  in  the  office  of  the  Com- 
missioner; and  every  assignment  affecting  a  patent  for 
invention  or  discovery  shall  be  deemed  null  and  void 
against  any  subsequent  assignee,  unless  such  instrument 
is  registered,  as  hereinbefore  prescribed,  before  the  reg- 
istering of  the  instrument  under  which  such  subsequent 
assignee  may  claim.  (§  22.) 

164.  PENALTY  FOR  INFRINGEMENT  OF  PATENT. — Every 
person  who,  without  the  consent  in  writing  of  the  pat- 
entee, makes,  constructs,  or  puts  in  practice  any  inven- 
tion or  discovery  for  which  a  patent  has  been  obtained 
under  this  act,  or  procures  such  invention  or  discovery 
from  any  person  not  authorized  to  make  or  use  it  by  the 
patentee,  and  uses  it,  shall  be  liable  to  the  patentee  in  an 
action  of  damages  for  so  doing;  and  the  judgment  shall 
be  enforced,  and  the  damages  and  costs  as  may  be  ad- 
judged shall  be  recovered,  in  like  manner  as  in  other 
cases  in  the  court  in  which  the  action  is  brought.  (§  23.) 

1-65.  PROSECUTION  FOR  INFRINGEMENT. — An  action  for 
the  infringement  of  a  patent  may  be  brought  before  any 
court  of  record  having  jurisdiction  to  the  amount  of  dam- 
ages asked  for,  and  having  its  sittings  within  the  Prov- 
ince in  which  the  infringement  is  said  to-  have  taken 
place,  and  being  at  the  same  time,  of  the  courts  of  such 
jurisdiction  within  such  Province,. the  one  of  which  the 
place  of  holding  is  nearest  to  the  place  of  residence  or  of 
business  of  the  defendant,  and  such  court  shall  decide 


DOMINION  OF  CANADA.  125 

the  case  and  determine  as  to  costs.  In  any  action  for 
the  infringement  of  a  patent,  the  court,  if  sitting,  or  any 
judge  thereof  in  chambers  if  the  court  be  not  sitting, 
may,  on  the  application  of  the  plaintiff  or  defendant  re- 
spectively, make  such  order  for  an  injunction  restraining 
the  opposite  party  from  further  use,  manufacture,  or  sale 
of  the  subject  matter  of  the  patent,  and  for  his  punish- 
ment in  the  event  of  disobedience  to  such  order,  or  for 
inspection  or  account,  and  respecting  the  same  and  the 
proceedings  in  the  action,  as  the  court  or  judge  may  see 
fit;  but  from  such  order  an  appeal  shall  lie  under  the 
same  circumstances  and  to  the  same  court  as  from  other 
judgments  or  orders  of  the  court  in  which  the  order  was 
made.  (§  24.) 

166.  COURT  MAT  DISCRIMINATE  IN  CERTAIN  CASES. — 
Whenever  the  plaintiff  fails  to  sustain  his  action,  because 
his  specification  and  claim  embrace  more  than  that  of 
which  he  was  the  first  inventor  or  discoverer,  and  it  ap- 
pears that  the  defendant  used  or  infringed  any  part  of 
the  invention  or  discovery  justly  and  truly  specified  and 
claimed  as  new,  the  court  may  discriminate,  and  the 
judgment  may  be  rendered  accordingly.     (§  25.) 

167.  DEFENSE  IN  SUCH  CASES. — The  defendant  in  any 
such  action  may  specially  plead  as  matter  of  defense  any 
fact  or  default  which  by  this  act  or  by  law  would  render 
the  patent  void;  and  the  court  shall  take  cognizance  of 
that  special  pleading  and  of  the  facts  connected  there- 
with, and  shall  decide  the  case  accordingly.     (§  26.) 

11* 


126  FOREIGN  PATENT  LAWS. 


XIV.  Nullity,  Impeachment,  and  Yoidance  of  Patents. 


SEC. 

168.  Patents  to  be  void  in  certain 

cases,  or  only  valid  for  part. 

169.  Patents  to  be  conditioned  on 

manuiacture  in  Canada  with- 
in three  years ;  importing 
the  article  patented. 


SEC. 

170.  Proceedings  for    impeachment 

of  patent. 

171.  Certificate  of  judgment  voiding 

patent  to  be  entered. 

172.  Judgment  to  be  subject  to  ap- 

peal. 


168.  PATENT  TO  BE  VOID  IN  CERTAIN  CASES,  OR  ONLY 
VALID  FOR  PART. — A  patent  shall  be  void  if  any  mate- 
rial allegation  in  the  petition  or  declaration  of  the  appli- 
cant be  untrue,  or  if  the  specification  and  drawings  contain 
more  or  less  than  is  necessary  for  obtaining  the  end  for 
which  they  purport  to  be  made,  such  omission  or  addi- 
tion being  willfully  made  for  the  purpose  of  misleading; 
but  if  it  shall  appear  to  the  court  that  such  omission  or 
addition  is  simply  an  involuntary  error,  and  it  is  proved 
that  the  patentee  is  entitled  to  the  remainder  of  his  pat- 
ent pro  tanto,  the  court  shall  render  a  judgment  in  accord- 
ance with  the  facts,  and  determine  as  to  costs,  and  the 
patent  shall  be  held  valid  for  such  part  of  «the  invention 
described,  and  two  office  copies  of  such  judgment  shall 
be  furnished  to  the  Patent  Office  by  the  patentee,  one  to 
be  registered  and  to  remain  of  record  in  the  office,  and 
the  other  to  be  attached  to  the  patent  and  made  a  part 
of  it  by  a  reference.     (§  27.) 

169.  PATENTS  TO  BE  CONDITIONED  ON  MANUFACTURE  IN 
CANADA  WITHIN  THREE  YEARS;  IMPORTING  THE  ARTICLE 
PATENTED. — Every  patent  granted  under  this  act  shall  be 
subject,  and  expressed  to  be  subject,  to  the  condition  that 
such  patent,  and  all  the  rights  and  privileges  thereby 


DOMINION  OP  CANADA.  127 

granted,  shall  cease  and  determine  and  the  patent  shall 
be  null  and  void  at  the  end  of  three  years  from  the  date 
thereof,  unless  the  patentee  shall,  within  that  period, 
have  commenced,  and  shall  after  such  commencement 
carry  on  in  Canada,  the  construction  or  manufacture  of 
the  invention  or  discovery  patented,  in  such  manner  that 
any  person  desiring  to  use  it  may  obtain  it,  or  cause  it 
to  be  made  for  him,  at  a  reasonable  price,  at  some  man- 
ufactory or  establishment  for  making  or  constructing  it 
in  Canada,  and  that  such  patent  shall  be  void  if,  after 
the  expiration  of  eighteen  months  from  the  granting 
thereof,  the  patentee  or  his  assignee  or  assignees,  for  the 
whole  or  a  part  of  his  interest  in  the  patent,  imports  or 
causes  to  be  imported  into  Canada  the  invention  or  dis- 
covery for  which  the  patent  is  granted.  (§  28.) 

170.  PROCEEDINGS  FOR  IMPEACHMENT  OF  PATENT. — Any 
person  desiring  to  impeach  any  patent  issued  under  this 
act  may  obtain  a  sealed  and  certified  copy  of  the  patent, 
and  of  the  petition,  declaration,  drawings,  and  specifica- 
tion thereunto  relating,  and  may  have  the  same  filed  in 
the  office  of  the  prothonotary  or  clerk  of  the  superior 
court  for  the  Province  of  Quebec,  or  of  the  court  of 
queen's  bench  or  common  pleas  for  the  Province  of  On- 
tario, or  of  the  supreme  court  in  the  Province  of  Nova 
Scotia,  or  of  the  court  of  queen's  bench  in  the  Province 
of  New  Brunswick,  according  to  the  domicil  elected  by 
the  patentee  as  aforesaid,  which  courts  shall  adjudicate 
on  the  matter  and  decide  as  to  costs.  The  patent  and 
documents  aforesaid  shall  then  be  held  as  of  record  in 
such  court,  so  that  a  writ  of  scire  facias  under  the  seal  of 
the  court,  grounded  upon  such  record,  may  issue  for  the 
repeal  of  the  patent  for  legal  cause  as  aforesaid,  if  upon 


128  FOREIGN  PATENT  LAWS. 

proceedings  had  upon  the  writ  in  accordance  with  the 
meaning  of  this  act  the  patent  be  adjudged  to  be  void. 
(§  29.) 

171.  CERTIFICATE  OF  JUDGMENT  VOIDING  PATENT  TO  BE 
ENTERED.  —  A  certificate  of  the  judgment  voiding  any- 
patent  shall,  at  the  request  of  any  person  or  party  filing 
it  to  be  of*  record  in  the  Patent  Office,  be  entered  on  the 
margin  of  the  enrollment  of  the  patent  in  the  office  of 
the  Commissioner,  and  the  patent  shall  thereupon  be, 
and  be  held  to  have  been,  void  and  of  no  effect,  unless 
and  until  the  judgment  be  reversed  on  appeal,  as  herein- 
after provided.     (§  30.) 

172.  JUDGMENT  TO  BE  SUBJECT  TO  APPEAL.  —  The  judg- 
ment declaring  any  patent  void  shall  be  subject  to  appeal 
to  any  court  of  appeal  having  appellate  jurisdiction  in 
other  cases  over  the  court  by  which  the  same  was  ren- 
dered.    (§  31.) 


XV.  Patents  Issued  under  Former  Laws. 


SEC. 


Existing  provincial  patents  to 
remain  in  force. 


SEC. 

174.  Handing  over  records  of  pat- 
ent offices  to  Commissioner. 


173.  EXISTING  PROVINCIAL  PATENTS  TO  EEMAIN  IN 
FORCE.; — All  patents  issued  under  any  act  of  the  legisla- 
ture of  the  late  Province  of  Canada,  or  of  Nova  Scotia, 
or  of  New  Brunswick,  and  all  patents  issued  for  the 
Provinces  of  Ontario  and  Quebec,  under  the  act  of  the 
late  Province  of  Canada,  to  the  date  of  the  coming  into 
operation  of  the  present  act,  shall  remain  in  force  for  the 
same  term  and  for  the  same  extent  of  territory  as  if 
the  act  under  which  they  were  issued  had  not  been  re- 


DOMINION  OF  CANADA.  129 

pealed,  but  subject  to  the  provisions  of  this  act  in  so  far 
as  applicable  to  them. 

2.  And  it  shall  be  lawful  for  the  Commissioner,  upon 
the  application  of  the  patentee  named  in  any  such  patent, 
being  the  inventor  or  discoverer  of  the  subject-matter  of 
the  patent  and  a  British  subject,  or  a  resident  in  any 
Province  of  Canada  for  upwards  of  a  year,  if  the  subject- 
matter  of  the  patent  had  not  been  known  or  used,  nor 
with  the  consent  of  the  patentee  on  sale  in  any  of  the 
other  Provinces  of  the  Dominion,  to  issue,  on  payment 
of  the  proper  fees  in  that  behalf,  a  patent  under  this  act, 
extending  such  provincial  patent  over  the  whole  of  the 
Dominion,  subject  to  the  provisions  of  the  seventeenth 
section;  but  no  patent  so  issued  shall  extend  beyond  the 
remainder  of  the  term  mentioned  in  the  provincial  pat- 
ent. (§32.) 

174.  HANDING  OVER  OF  RECORDS  OF  PROVINCIAL  PAT- 
ENT OFFICE  TO  THE  COMMISSIONER. — All  the  records  of 
the  Patent  Offices  of  the  late  Province  of  Canada,  and 
of  the  Provinces  of  Ontario  and  Quebec,  of  £fova  Scotia 
and  New  Brunswick,  shall  be  handed  over  by  the  offi- 
cers in  charge  of  them  to  the  Commissioner  of  Patents 
of  invention  or  discovery,  to  form  part  of  the  records  of 
the  Patent  Office  for  the  purposes  of  this  act.  (§  33.) 

XVI.  Tariff  of  Fees. 


SEC. 

175-178.  With  reference  to  fees, 
how  and  to  whom  to  be 
paid. 


SEC. 

179.  The  Commissioner  to  have  the 

power  of  returning  one  half  of 

the  Government  fee. 


175.  FEES  How  AND  TO  WHOM  TO  BE  PAID. — The  fol- 
lowing fees  shall  be  payable  to  the  Commissioner  before 


130  FOREIGN  PATENT  LAWS. 

an  application  for  any  of  the  purposes  hereinafter  men- 
tioned shall  be  entertained,  that  is  to  say: 

On  petition  for  a  patent  for  five  years--- $20  00 

On  petition  for  extension  from  five  to  ten  years-     20  00 
On  petition  for  extension  from  ten   to  fifteen 

years 20  00 

On  lodging  a  caveat 5  00 

On  asking  to  register  a  judgment  pro  tanto 4  00 

On  asking  to  register  an  assignment 2  00 

On  asking  to  attack  a  disclaimer  to  a  patent 4  00 

On  asking  for  a  copy  of  patent  with  specification-       4  00 
On  petition  to  reissue  a  patent  after  surrender 
and  on  petition  to  extend  a  former  patent  to 
the  Dominion  the  fee  shall  be  at  the  rate  of--       4  00 
for  every  un expired  year  of  duration  of  such 
patent. 

On  office  copies  of  documents,  not  above  mentioned, 
the  following  charges  shall  be  exacted : 
For  every  single  or  first  folio  of  certified  copy--  50 

For  every  subsequent  hundred  words,  (fractions 
from  and  under  fifty  being  not  counted,  and 

over  fifty  being  counted  for  one  hundred) 25 

(§34.) 

176.  FEES,  &c. — For  every  copy  of  drawings  the  party 
applying  shall  pay  such,  sum  as  the  Commissioner  con- 
siders a  fair  remuneration  for  time  and  labor  expended 
thereon  by  an  officer  of  the  department  or  person  em- 
ployed to  perform  such  service.     (§  35.) 

177.  FEES,  &c.— The  said  fees  shall  be  in  full  of  all 
services  performed  under  this  act  in  any  such  case  by 
the  Commissioner  or  any  person  employed  in  the  Pat- 
ent Office.     (§  36.) 


DOMINION  OF  CANADA. 


131 


178.  FEES,  &c. — All  fees  received  under  this  act  shall  he 
paid  over  to  the  Receiver  General,  and  form  part  of  the 
consolidated  revenue  fund  of  Canada,  except  such  sums 
as  may  he  paid  for  copies  of  drawings  when  made  by  per- 
sons not  receiving  salaries  in  the  Patent  Office.     (§  37.) 

179.  COMMISSIONER  HAS  POWER  TO  RETURN  ONE  HALF 
OF  GOVERNMENT  FEE. — No  fee  shall  be  made  the  subject 
of  exemption  in  favor  of  any  person ;  and  no  fee,  once 
paid,  shall  be  returned  to  the  person  who  paid  it,  except: 

1.  When  the  invention  is  not  susceptible  of  being  pat- 
ented ; 

2.  When  the  petition  for  a  patent  is  withdrawn. 
And  in  every  such  case  the  Commissioner  may  return 

one  half  of  the  fee  paid; 

And  in  the  case  of  withdrawal,  a  fresh  application  shall 
be  necessary  to  revive  the  claim,  as  if  no  proceeding  had 
taken  place  in  the  matter.  (§  38.) 

XVII.  Miscellaneous  Provisions. 


SEC. 

180.  Applicant  may  file  a  caveat. 

181.  Causes  why  Commissioner  may 

refuse  to  grant  a  patent. 

182.  Commissioner  to  notify  appli- 

cant of  rejection. 

183.  Appeal  to  Governor  in  Council. 

184.  Interfering  applications. 

185.  Documents  in  Patent  Office  to 

be  open  to  inspection  of  the 
public,  except  caveats. 

186.  Clerical  errors. 

187.  Lost  or  destroyed  patent  may 

be  replaced. 

188.  Use  of  patented  inventions  al- 

lowed in  foreign  ships. 


SEC. 

189.  Patent  not  to  affect  previous 

purchaser  of  invention. 

190.  Patented  articles  to  be  stamped 

with  date  of  patent. 

191.  Punishment    of    parties    who 

stamp  an  article  as  patented 
when  such  is  not  the  case. 

192.  Punishment    of    offenders   for 

making  false  entry  or  copy. 

193.  All  acts  inconsistent  with  pres- 

ent act  repealed. 

194.  Title  of  act:  The  Patent  Act  of 

1869. 

195.  Act  to  commence  and  take  effect 

July  1,  1869. 


132  FOREIGN  PATENT  LAWS. 

180.  INTENDING  APPLICANT  MAY  FILE  A  CAVEAT. — An 
intending  applicant  for  a  patent,  who  has  not  yet  per- 
fected his  invention  or  discovery  and  is  in  fear  of  being 
despoiled  of  his  idea,  may  file  in  the  Patent  Office  a  de- 
scription of  his  invention  or  discovery  so  far,  with  or 
without  plans,  at  his  own  will;  and  the  Commissioner, 
on  reception  of  the  fee  hereinbefore  prescribed,  shall 
cause  the  said  document  to  be  preserved  in  secrecy,  with 
the  exception  of  delivering  copies  of  the  same  whenever 
required  by  the  said  party  or  by  any  judicial  tribunal — 
the  secrecy  of  the  document  to  cease  when  he  obtains 
a  patent  for  his  invention  or  discovery;  and  such  docu- 
ment shall  be  called  a  caveat.     Provided  always  that  if 
application  shall  be  made  by  any  other  person  for  a  pat- 
ent for  any  invention  or  discovery  with  which  such  caveat 
may  in  any  respect  interfere,  it  shall  be  the  duty  of  the 
Commissioner  forthwith  to  give  notice  by  mail  to  the 
person  who  has  filed  such  caveat,  and  such  person  shall 
within  three  months  after  the  date  of  mailing  the  notice, 
if  he  would  avail  himself  of  the  caveat,  file  his  petition 
and  take  the  other  steps  necessary  on  an  application  for 
patent,  and  if,  in  the  opinion  of  the  Commissioner,  the 
applications  are  interfering,  like  proceedings  may  be  had 
in  all  respects  as  are  by  this  .act  provided  in  the  case  of 
interfering  applications.     Provided  further,  that  unless 
the  person  filing  any  caveat  shall,  within  four  years  from 
the  filing  thereof,  have  made  application  for  a  patent,  the 
caveat  shall  be  void.     (§  39.) 

181.  CAUSES  WHY  COMMISSIONER  MAY  REFUSE  TO  GRANT 
A  PATENT. — The  Commissioner  may  object  to  grant  a 
patent  in  the  following  cases : 


DOMINION  OF  CANADA.  133 

1.  When  he  is  of  opinion  that  the  alleged  invention  or 
discovery  is  not  patentable  in  law; 

2.  When  it  appears  that  the  invention  or  discovery  is 
already  in  the  possession  of  the  public  with  the  consent 
or  allowance  of  the  inventor; 

3.  When  it  appears  that  the  invention  or  discovery  has 
been  described  in  a  book  or  other  printed  publication 
before  the  date  of  the  application,  or  otherwise  in  the 
possession  of  the  public; 

4.  When  it  appears  that  the  invention  or  discovery  has 
already  been  patented,  except,  however,  when  the  case  is 
one  within  the  seventh  section  of  this  act,  or  one  in  which 
the  Commissioner  has  doubts  as  to  whether  the  patentee 
or  the  applicant  is  the  first  inventor  or  discoverer.  (§  40.) 

182.  COMMISSIONER  TO  NOTIFY  APPLICANT  OF  REJEC- 
TION.— Whenever  the  Commissioner  objects  to  grant  a 
patent,  as  aforesaid,  he  shall  notify  the  applicant  to  that 
effect,  and  shall  state  the  ground  or  reason  therefor  with 
sufficient  detail  to  enable  the  applicant  to  answer,  if  he 
can,  the  objection  of  the  Commissioner.     (§  41.) 

183.  APPEAL  TO  GOVERNOR  IN  COUNCIL. — Every  appli- 
cant who  has  failed  to  obtain  a  patent  by  reason  of  the 
objection  of  the  Commissioner,  as  aforesaid,  may,  at  any 
time  within  six  months  after  notice  thereof  has  been  ad- 
dressed to  him  or  his  agent,  appeal  from  the  decision  of 
the  Commissioner  to  the  Governor  in  Council.     (§  42.) 

184.  INTERFERING  APPLICATIONS. — In  cases  of  inter- 
fering applications  for  a  patent  the  same  shall  be  submit- 
ted to  the  arbitration  of  three  skilled  persons,  one  of 
whom  shall  be  chosen  \>y  each  of  the  applicants,  and  the 
third  person  shall  be  chosen  by  the  Commissioner,  or  by 
his  deputy,  or  the  person  appointed  to  perform  the  duty 

12 


134  FOREIGN  PATENT  LAWS. 

of  that  office;  and  the  decision  or  award  of  such  arbi- 
trators, or  any  two  of  them,  delivered  to  the  Commis- 
sioner in  writing,  and  subscribed  by  them,  or  any  two  of 
them,  shall  be  final  as  far  as  respects  the  granting  of  the 
patent. 

2.  If  either  of  the  applicants  refuses  or  fails  to  choose 
an  arbitrator,  when  required  so  to  do  by  the  Commis- 
sioner, the  patent  shall  issue  to  the  opposite  party;  and 
when  there  are  more  than  two  interfering  applicants,  and 
the  parties  applying  do  not  all  unite  in  appointing  three 
arbitrators,  the  Commissioner  .or  his  deputy,  or  person 
appointed  to  perform  the  duty  of  that  office,  may  appoint 
the  three  arbitrators  for  the  purposes  aforesaid.  (§  43.) 

185..  DOCUMENTS  IN  PATENT  OFFICE  TO  BE  OPEN  TO  IN- 
SPECTION OF  THE  PUBLIC,  EXCEPT  CAVEATS. — All  specifi- 
cations, drawings,  models,  disclaimers,  judgments,  and 
other  papers,  except  caveats,  shall  be  open  to  the  inspec- 
tion of  the  public  at  the  Patent  Office,  under  such  regu- 
lations as  may  be  adopted  in  that  behalf.  (§  44.) 

186.  CLERICAL  ERRORS. — Clerical  errors  happening  in 
the  framing  or  copying  of  any  instrument  of  the  Patent 
Office  shall  not  be  construed  as  invalidating  the  same, 
but  when  discovered  they  may  be  corrected  under  the 
authority  of  the  Commissioner.     (§45.) 

187.  LOST  OR  DESTROYED  PATENT  MAY  BE  REPLACED. — 
In  case  any  letters  patent  shall  be  destroyed  or  lost,  others 
of  the  like  tenor,  date,  and  effect  may  be  issued  in  lieu 
thereof,  on  the  party  paying  the  fees  hereinbefore  pre- 
scribed for  office  copies  of  documents.     (§  46.) 

188.  USE  OF  PATENTED  INVENTIONS  ALLOWED  IN  FOR- 
EIGN SHIPS. — No  letters  patent  shall  extend  to  prevent 
the  use  of  any  invention  or  discovery  in  any  foreign  ship 


DOMINION  OF  CANADA.  135 

or  vessel,  where  such  invention  or  discovery  is  not  so 
used  for  the  manufacture  of  any  goods  to  be  vended 
within  or  exported  from  Canada.  (§  47.) 

189.  PATENT  NOT  TO  AFFECT  PREVIOUS  PURCHASER  OF 
INVENTION. — Every  person  who,  before  the  issuing  of  a 
patent,  has  purchased,  constructed,  or  acquired  any  inven- 
tion or  discovery,  for  which  a  patent  has  been  obtained 
under  this  act,  shall  have  the  right  of  using  and  vending 
to  others  the  specific  art,  machine,  manufacture,  or  com- 
position of  matter  patented,  so  purchased,  constructed, 
or  acquired  before  the  issue  of  the  patent  therefor,  with- 
out being  liable  to  the  patentee  or  his  representatives  for 
so  doing;   but  the  patent  shall  not  be  held  iu valid  as 
regards  other  persons  by  reason  of  such  purchase,  con- 
struction, or  acquisition,  or  use  of  the  invention  or  dis- 
covery by  the  person  first  aforesaid,  or  by  those  to  whom 
he  may  have  sold  the  same,  unless  the  same  was  pur- 
chased, constructed,  or  acquired,  or  used  for  a  longer 
period  than  one  year  before  the  application  for  a  patent 
therefor.     (§  48.) 

190.  PATENTED  ARTICLES  TO  BE  STAMPED  WITH  DATE 
OF  PATENT. — Every  patentee  under  this  act  shall  stamp 
or  engrave  on  each  patented  article  sold,  or  offered  for 
sale,  by  him,  the  year  of  the  date  of  the  patent  applying 
to  such  article,  thus :  "Patented  1869,"  or  as  the  case 
may  be ;  and  any  such  patentee  selling  or  offering  for 
sale  any  such  patented  article  not  so  marked,  shall  be 
liable  to  the  punishment  of  a  fine  not  to  exceed  $100,  and 
in  default  of  the  payment  of  such  fine  to  imprisonment 
not  to  exceed  two  months.     (§  49.) 

191.  PUNISHMENT  OF  PARTIES  WHO  STAMP  AN  ARTICLE 
AS  PATENTED  WHEN  SUCH  is  NOT  THE  CASE. — Whosoever 


136  FOREIGN  PATENT  LAWS. 

writes,  paints,  prints,  molds,  casts,  carves,  engraves, 
stamps,  or  otherwise  marks  upon  anything  made  or  sold 
by  him,  and  for  the  sole  making  or  selling  of  which  he 
is  not  the  patentee,  the  name,  or  any  imitation  of  the 
name,  of  any  patentee  for  the  sole  making  or  selling  of 
such  thing,  without  the  consent  of  such  patentee,  or 
without  the  consent  of  the  patentee  Writes,  paints,  prints, 
molds,  casts,  carves,  engraves,  stamps,  or  otherwise  marks 
upon  anything  not  purchased  from  the  patentee,  the 
words  "patent,"  "letters  patent,"  "Queen's  patent," 
"  patented,"  or  any  word  or  words  of  like  import,  with 
the  intent  of  counterfeiting  or  imitating  the  stamp,  mark, 
or  device  of  the  patentee,  or  of  deceiving  the  public  and 
inducing  them  to  believe  that  the  thing  in  question  was 
made  or  sold  by  or  with  the  consent  of  the  patentee,  shall 
be  deemed  to  have  committed  a  misdemeanor,  and  shall, 
on  conviction,  be  punished  therefor  by  fine  or  by  imprison- 
ment, or  both,  in  the  discretion  of  the  court  before  which 
the  conviction  shall  be  had;  but  the  fine  shall  not  exceed 
$200,  nor  shall  the  imprisonment  exceed  three  months. 
(§  50.) 

192.  PUNISHMENT  OF  OFFENDERS  FOR  MAKING  FALSE 
ENTRY  OR  COPY. — Any  person  willfully  making  or  causing 
to  be  made  any  false  entry  in  any  register  or  book,  or  any 
false  or  altered  copy  of  any  document  relating  to  the  pur- 
poses of  this  act,  or  who  shall  produce  or  tender  any  such 
false  or  altered  document,  knowing  the  same  to  be  such, 
shall  be  guilty  of  a  misdemeanor,  and  shall  be  punished 
by  fine  and  imprisonment  accordingly.     (§  51.) 

193.  ALL  ACTS  INCONSISTENT  WITH  PRESENT  ACT  RE- 
PEALED.— Chapter  thirty-four  of  the  Consolidated  Stat- 
utes of  the  late  Province  of  Canada,  respecting  patents 


DOMINION  OF  CANADA.  137 

for  inventions,  chapter  one  hundred  and  seventeen  of  the 
Kevised  Statutes  of  Nova  Scotia,  (third  series,)  chapter 
one  hundred  and  eighteen  of  the  Revised  Statutes  of 
New  Brunswick,  and  any  act  amending  any  of  the  said 
chapters  or  any  other  act,  are  hereby  repealed,  in  so  far 
as  they  or  any  of  them  may  be  inconsistent  with  this  act, 
or  make  any  provision  in  any  matter  provided  for  by  this 
act,  except  only  as  respects  all  rights  acquired  and  pen- 
alties or  liabilities  incurred  under  the  said  laws,  or  any 
of  them,  before  the  coming  into  force  of  this  act.  (§  52.) 

194.  TITLE  OF  ACT:  THE  PATENT  ACT  OF  1869. — "When 
citing  this  act  it  shall  be  sufficient  to  call  it  "  The  Patent 
Act  of  1869."     (§  53.) 

195.  ACT  TO   COMMENCE  AND  TAKE  EFFECT  JULY  1, 
1869. — This  act  shall  commence  and  take  effect  on  the 
first  day  of  July,  1869.     (§  54.) 


XVIII.  Rules,  Regulations,  and  Forms  of  the  Canadian 
Patent  Office. 


SEC. 

196.  Date  of  approval. 

197.  Personal  appearance. 

198.  Applicant  responsible. 

199.  Correspondence. 

200.  Clerical  requirements. 

201.  Address. 

202.  Forms. 

203.  Petition. 

204.  Joint  application. 

205.  Oath. 

206.  Specification. 

207.  Drawings. 


SEC. 

208.  Extension. 

209.  Form  of  patent. 

210.  Model. 

211.  Fees. 

212.  Time  for  perfecting  application. 

213.  Separate  inventions  cannot  be 

claimed  in  one  application. 

214.  Protest. 

215.  Cases  of  doubt. 

216.  Caveat. 

217.  Intricate  cases. 

218.  General  remarks. 


196.  DATE  OF  APPROVAL. — The  following  rules  were 

12* 


138  FOREIGN  PATENT  LAWS. 

approved  by  the  Governor  in  Council  on  the  2d  of  July, 
1869,  under  the  patent  act  of  1869. 

197.  PERSONAL  APPEARANCE. — There  is  no  necessity 
for  any  personal  appearance  at  the  Patent  Office,  unless 
specially  called  for  hy  order  of  the  Commissioner  or 
the  Deputy  Commissioner,  every  transaction  being  car- 
ried on  by  writing.     (Rules  of  2d  July,  1869.) 

198.  APPLICANT  RESPONSIBLE. — In  every  case  the  ap- 
plicant or  depositor  of  any  paper  is  responsible  for  the 
merits  of  his  allegations,  and  of  the  validity  of  the  instru- 
ments furnished  by  him  or  his  agent.     (Ib.} 

199.  CORRESPONDENCE. — The  correspondence  is  carried 
on  with  the  applicant,  or  with  the  agent  who  has  remit- 
ted or  transmitted  the  papers  to  the  office,  but  with  one 
person  only.     (Ib.} 

200.  CLERICAL    REQUIREMENTS.  —  All    papers    to    be 
clearly  and  neatly  written  on  foolscap  paper,  and  every 
word  of  them  is  to  be  distinctly  legible,  in  order  that  no 
difficulty  should  be  met  with  in  taking  cognizance  of 
and  in  registering  and  copying  them.     (Ib.} 

201.  ADDRESS. — All   communications   are   to  be   ad- 
dressed in  the  following  words:  "To  the  Commissioner 
of  Patents,  Ottawa."     (Ib.} 

202.  FORMS. — As  regards   proceedings   not  specially 
provided  for  in  the  following  forms,  any  form  being  con- 
formable to  the  letter  and  spirit  of  the  laws  will  be  ac- 
cepted, and  if  not  so  conformable  will  be  returned  for 
correction.     (Ib.} 

203.  PETITION. — The  petition  asking  for  the  granting 
of  a  patent  of  invention  shall  be  made  after  the  follow- 
ing form:     (Ib.) 


DOMINION  OF  CANADA.  139 

To  the  Commissioner  of  Patents, 

Ottawa: 

The  petition  of  [Christian  name  or  names  in  full  of  inventor,  inventors, 
assignee,  or  other  legal  representative  of  inventor],  of  the  [city,  town,  or  other 
locality,  as  the  case  may  be],  in  the  Province  of  [as  the  case  may  be],  [trade 
or  profession],  showeth :  That  your  petitioner  has  been  a  resident  of  Canada 
for  at  least  one  year  next  before  the  present  application  [mention  to  be 
made  of  place,  and  changes  of  residence];  that  he  hath  discovered  [or  "in- 
vented," as  the  ease  may  be]  a  certain  new  and  useful  [art,  "machine," 
"manufacture,"  or  "composition  of  matter,"  as  the  case  may  be,  or  certain 
new  and  useful  "improvements"],  on  a  certain  [art,  "machine"  "manufac- 
ture," or  "composition  of  matter,"  as  the  case  may  be],  now  in  ordinary  use 
for  [stating  the  use  or  object  of  the  art,  &c.,  as  the  case  may  be],  to  be  called 
or  known  as  ["name  of  invention  or  improvement"],  and  that  such  his  dis- 
covery [or  "invention"  as  the  case  may  be],  was  and  is  not  known  or  used 
by  others  before  his  discovery  [or  "invention,"  as  the  case  may  be]  thereof, 
and  was  and  is  not,  at  the  time  of  this  application,  in  public  use  or  for 
sale  with  his  consent  or  allowance  as  such  inventor  [or  discoverer,  as  the 
case  may  be];  and  that  the  oath  or  affirmation,  drawings,  descriptions,  and 
specifications  thereof,  in  duplicate,  are  transmitted  herewith,  pursuant  to 
the  statute  in  such  case  made  and  provided;  the  said  invention  being  [in- 
sert here  a  very  short  description  of  the  invention  and  of  its  object]. 

Your  petitioner,  being  desirous  of  obtaining  an  exclusive  property  in  the 
said  invention  or  discovery  [as  the  case  may  be],  therefore  prays  that  a 
patent  may  be  granted  to  your  petitioner  therefor  for  the  term  allowed  by 
law ;  and,  for  the  purposes  of  the  patent  act  of  1869,  your  petitioner  elects 
his  domicil  in  the  [city,  town,  or  locality,  as  the  case  may  be],  in  the  county 
of  [name  of  county],  in  the  Province  of  [name  of  Province]. 

[Signature  of  inventor:] 

[Place  and  date.] 

204.  JOINT  APPLICATION. — In  case  of  joint  applications, 
in  cases  of  applications  from  assignees,  heirs,  or  other 
legal  representatives,  the  petition  should,  otherwise  being 
made  after  the  above  given  form,  be  altered,  according 
to  the  circumstances  of  the  case,  to  meet  the  require- 
ments of  the  statute,  particularly  of  §§  8, 10, 11, 12.  ( Vide 
supra  pp.  116,  117,  118.) 

205.  OATH. — The  oath  to  be  subscribed  by  an  appli- 


140  FOREIGN  PATENT  LAWS. 

cant  for  a  patent  of  invention  shall  be  made  after  the 
following  form :  (Ib.) 

Canada,  Province  of  , 

county  of 

I,  ,  of  ,  in  the  county  of  ,  in  the  Province 

of  ,  make  oath  and  solemnly  swear,  that  I  verily  believe  that  I  am 

the  inventor  [or  discoverer]  of  the  invention  which  I  call  [name  of  the  in- 
vention], and  for  which  I  solicit  a  patent  by  my  petition  to  the  Commis- 
sioner of  Patents,  dated  the  [insert  date  of  petition],  and  I  further  make 
oath  that  I  have  been  a  resident  of  Canada  for  one  year  next  before  my 
application.  [Signature  of  deponent.] 

Sworn  and  signed    before  me 
this  [day  of  month  and  year], 
at  [name  of  place]. 
[Signature  of  J.  P.], 

Justice  of  the  Peace. 

The  same  general  form  is  to  be  adopted,  with  such 
alterations  as  may  be  necessitated  by  circumstances, 
where  the  application  is  made  abroad,  or  by  joint  invent- 
ors, by  assignees,  heirs,  or  other  legal  representatives,  in 
conformity  with  the  patent  act,  §  11.  (Ib.} 

206.  SPECIFICATION. — The  specification  accompanying 
a  petition  for  a  patent  of  inventions  shall  be  made  in 
duplicate,  and  after  the  following  form :  (Ib.) 

To  all  whom  it  may  concern : 

Be  it  known  that  I,  [name  of  inventor  or  discoverer,  as  the  case  may  be,] 
of  [place  of  residence  and  trade  or  profession;  if  more  than  one  inventor, 
add  his  or  their  names,  place  of  residence,  and  trade  or  profession,  and  word 
the  specification  throughout  according  to  circumstances],  have  invented 
a  new  and  useful  [art,  "machine,"  &c.,  same  as  in  petition],  and  I  do  hereby 
declare  that  the  following  is  a  full,  clear,  aud  exact  description  of  the  con- 
struction and  operation  of  the  same.  [Reference  being  had  to  the  annexed 
drawings,  where  the  nature  of  the  case  admits  of  drawings ;  describe  the  sev- 
eral drawings,  and  refer  to  the  parts  by  letters.  Here  describe  the  principle, 
and  the  several  modes  in  which  the  applicant  contemplates  the  application  of 
that  principle  or  character,  by  which  the  invention  or  discovery  may  be  dis- 


DOMINION  OF  CANADA.  141 

tinguished  from  other  inventions  or  discoveries.]  What  I  claim  in  my  inven- 
tion is,  [here  express  the  nature  and  character  of  the  invention  in  short, 
without  reference  to  its  advantages,  and  identify  the  parts  claimed,  separately 
or  in  combination.  If  the  specification  is  for  an  improvement  or  improve- 
ments, the  original  invention  should  be  disclaimed,  and  the  improvement  or 
improvements  clearly  and  separately  enumerated,  as  distinguished  from  the 
original  object  so  improved.] 
[Place,  date,  and  year.] 

[Signature  of  inventor.] 
Signed  in  the  presence  of — 

[Signatures  of  two  witnesses,  and  to  be  the 
same  as  those  who  attest  the  drawing.] 

207.  DRAWINGS. — The  drawings  illustrating  the  speci- 
fication filed  with  an  application  for  a  patent  of  inven- 
tion shall  be  made  in  accordance  with  the  following 
directions  and  form,  and  furnished  in  duplicate: 

The  drawings  are  to  be  made  on  tracing  linen,  each 
sheet  to  be  of  the  size. of  a  foolscap  sheet  of  paper,  and 
the  said  sheets  as  few  in  number  as  possible.  The  dif- 
ferent figures  of  the  drawings  are  to  be  marked  thus  : 
Fig.  1,  front  view;  fig.  2,  side  view,  &c.,  &c. ;  and  the 
separate  parts  are  to  be  marked  with  letters  in  the  spec- 
ification and  on  the  drawing  sheet  itself;  the  drawing 
must  bear  the  name  of  the  invention,  and  be  signed  by 
the  inventor  and  the  two  same  witnesses  who  signed  the 
specification,  all  after  the  following  general  form.  The 
drawings  are  to  be  neatly  executed,  and  without  colors : 

[Title  of  the  invention.] 

Fig.  1,  front  view. 

[Drawing.] 
Fig.  2,  side  view. 
[Drawing.] 

Fig.  3,  cross  section. 
[Drawing.] 

Fig.  4,  wheel. 
[Drawing.] 


142  FOREIGN  PATENT  LAWS. 

Reference  for  example: 

a.  Shaft; 

b.  Valve;. 

c.  Regulator; 
&c.,  &c.,  &c. 

Certified  that  this  is  the  drawing  deferred  to  in  the  specification  here- 
unto annexed. 

[Signature  of  the  applicant.] 
[Place  and  date.] 

[Signature  of  inventor.] 


208.  EXTENSION.  —  An  application  to  obtain  the  exten- 
sion of  a  former  patent  to  the  whole  of  the  Dominion 
must  be  accompanied  with  the  former  patent  itself,  with 
neat  duplicate  copies  of  the  original  specification  and 
drawing,  certified  by  the  inventor  before  the  same  two 
witnesses  signing  the  petition;  and  the  said  petition  shall 
be  made  after  the  following  form  :  (Ib.) 

To  the  Commissioner  of  Patents, 

Ottawa  : 

I,  [names,]  of  the  [locality  of  residence],  in  the  county  of  [name  of  county], 
in  the  province  of  [or  elsewhere,  as  the  case  may  be],  being  a  British  sub- 
ject, [or  a  resident  of  Canada  for  upwards  of  a  year,]  and  being  the  discov- 
erer [or  inventor]  of  the  subject-matter  of  a  patent  granted  to  me  on  [day, 
month,  and  year],  in  the  province  of  [Nova  Scotia,  New  Brunswick,  or 
former  Province  of  Canada,  or  for  the  Provinces  of  Ontario  and  Quebec,  as 
the  case  may  be],  which  I  now  produce,  and  the  said  subject-matter  of  my 
said  invention  and  patent  called  [name  of  invention]  being  not,  with  my 
consent,  known  or  used  nor  on  sale  in  any  of  the  other  Provinces  of  the 
Dominion,  I  hereby  therefore  pray  that  a  patent,  under  the  "  Patent  Act 
of  1869,"  be  granted  to  me,  extending  the  privileges  of  my  former  patent 
over  the  whole  of  the  Dominion  for  the  remainder  of  the  term  mentioned 
in  my  former  patent,  namely,  to  the  [insert  day,  month,  and  year  at  which 
the  former  patent  was  to  expire.] 

In  testimony  thereof  I  have  signed  in  the  presence  of  the  two  under- 
signed witnesses  at  the  place  and  date  hereunder  mentioned. 

[Place  and  date.] 

[Signature  of  the  applicant.] 

[Signatures  of  the  two  witnesses.] 


DOMINION  OF  CANADA.  143 

209.  FORM  OF  PATENT. — A  patent  of  invention  will  be 
made  after  the  following  form :     (Ib.} 

Canada,  Patent  of  Invention. 

TSEAL  1  Whereas  in  accordance  with  an  act  of  the  Parliament  of  Can- 
ada, called  "  The  Patent  Act  of  1869,"  [names  of  patentee},  of  the 
[name  of  locality],  in  the  province  of  [name  of  province],  being  i  resident 
of  Canada,  having  elected  his  domicil,  for  the  purpose  of  the  present  pat- 
ent, in  [designation  in  full  of  domicil  elected],  having  otherwise  complied 
with  the  requirements  of  the  said  act  to  obtain  a  patent,  and  having  fur- 
nished specification  and  drawings,  one  duplicate  of  each  being  hereunto 
annexed  as  part  essential  of  this  present  patent,  the  said  specification  and 
drawings  being  the  description  and  illustration  of  the  said  invention  called 
[name  of  the  invention  or  improvement},  of  which  the  said  [names]  declares 
himself  to  be  the  inventor. 

The  present  patent  is  granted  to  him,  his  heirs,  assigns,  or  other  legal 
representatives,  for  the  period  of  five  years  from  the  date  thereof,  subject  to 
extension  of  further  periods,  in  accordance  with  "  The  Patent  Act  of  1869," 
to  confer  on  the  said  patentee  all  the  privileges  intended  to  be  conferred  by 
the  said  act,  or  by  the  patentee  complying  with  the  further  obligations 
required  by  the  said  act. 

Provided  always  that  the  validity  of  this  present  patent  rests  on  the 
truthfulness  of  the  allegations,  description,  and  specification  of  the  said 
patentee. 

The  present  patent,  however,  shall  cease  and  determine  and  be  null  and 
void  at  the  end  of  three  years  from  the  date  thereof,  unless  the  patentee 
shall  within  that  period  have  commenced,  and  after  such  commencement 
carry  on,  in  Canada  the  construction  or  manufacture  of  the  said  invention, 
and  shall  cease  and  determine  and  be  null  and  void  at  the  end  of  eighteen 
months  from  the  granting  thereof,  if  the  patentee  or  his  legal  representa- 
tives import,  or  cause  to  be  imported,  into  Canada  the  invention  for  which 
the  patent  is  granted. 

In  testimony  whereof  the  present  patent  has  been  signed  according  to 
the  said  act,  sealed  with  the  seal  of  the  Patent  Office,  and  countersigned  in 
the  Department  of  Agriculture,  on  the  [date,  month,  and  year  written  in 
full  and  prominently.] 

[Signature  of  the  Commissioner  of  Patents 

or  of  a  member  of  the  Privy  Council.] 
Countersigned :  j 

Deputy  Commissioner.  ) 


144  FOREIGN  PATENT  LAWS. 

This  specification  will  be  attached  to  the  patent  to  form 
an  essential  part  thereof,  and  the  first  folio  of  the  said 
specification  will  be  sealed  at  one  corner  with  the  seal  of 
the  Patent  Office.  (76.) 

The  present  form,  otherwise  remaining  the  same,  will 
be  altered  in  some  particulars  to  meet  the  circumstances 
of  the  case  when  the  patent  is  given  to  joint  inventors, 
to  an  assignee  or  assignees,  to  legal  representatives,  or 
when  it  is  a  patent  extending  a  former  patent  to  the 
whole  of  the  Dominion,  or  is  a  reissue,  or  in  any  other 
special  case.  (76.) 

210.  MODEL. — The  models  required  by  law  must  be 
neat  and  substantial  working  models,  the  dimensions  of 
which  are  not  to  exceed,  in  any  case,  eighteen  inches  in 
their  longest  side,  unless  otherwise  allowed  by  special 
permission  previously  obtained.  Such  models  must  be 
BO  constructed  as  to  show  exactly  every  part  of  the  inven- 
tion and  its  mode  of  working.  In  cases  where  samples 
of  ingredients  and  samples  of  the  composition  made  of 
such  ingredients  (neither  of  which  being  dangerous  or 
explosive  substances)  are  required  by  law,  they  must  be 
contained  in  glass  bottles,  properly  arranged.  Both  mod- 
els and  bottles  must  bear  the  name  of  the  inventor,  the 
title  of  the  invention,  and  the  date  of  the  application ; 
and  they  must  be  furnished  to  the  Patent  Office  free  of 
every  charge,  and  delivered  in  good  order. 
'  211.  FEES. — All  fees  required  by  law  shall  be  trans- 
mitted with  the  application  to  which  they  appertain  in 
values  not  subject  to  any  discount,  and  be  better  made, 
whenever  practicable,  in  post-office  money-orders,  inclos- 
ed in  registered  letters.  (76.) 

212.  APPLICATIONS   TO    BE    PERFECTED   WITHIN    Two 


DOMINION  OF  CANADA.  145 

YEARS. — All  applications  must  be  proceeded  with  and 
perfected  within  two  years  after  the  lodging  of  the  peti- 
tion, in  default  of  which  it  will  be  regarded  as  aban- 
doned, and  all  previous  proceedings  and  payment  of  fees 
will  be  held  at  the  expiration  of  that  period  as  of  no 
avail.  (Ib.) 

213.  SEPARATE  INVENTIONS  CANNOT  BE  CLAIMED  IN  ONE 
APPLICATION. — Two  or  more  separate  inventions  cannot 
be  claimed  in  one  application,  nor  patented  in  one  pat- 
ent, unless  they  are  so  dependent  of  and  connected  with 
each  as  to  be  necessarily  taken  together  to  obtain  the  end 
sought  for  by  the  inventor;  and  in  this  latter  case  the 
Commissioner  of  Patents  is  the  judge  as  to  whether  or 
not  the  pretensions  of  the  applicant  are  founded  in  fact 
and  reason.     (Ib.) 

214.  PROTEST. — The  filing  of  a  protest  against  the  issu- 
ing of  a  patent  shall  not  be  taken  in  itself  as  a  sufficient 
reason  to  withhold  the  granting  of  such  patent  to  an  ap- 
plicant.    (Ib.} 

215.  CASES  OF  DOUBT. — In  cases  of  doubt,  and  in  ac- 
cordance with  the  letter  and  meaning  of  the  law,  patents 
may  be  issued  for  an  invention  already  patented,  a  trial 
before  a  judicial  tribunal  being  in  such  cases  the  only 
means  of  discovering  who  is  the  real  or  first  inventor. 

216.  CAVEAT. — A  caveat  must  be  composed  of  a  speci- 
fication, (and  drawings,)  and  as  long  as  it  remains  unin- 
terfered  with,  and  that  the  filer  is  not  called  upon  to  lodge 
his  application  in  due  form  on  account  of  an  interfering 
application,  the  said  proprietor  thereof  can  lodge  with  it 
additional  papers,  provided  these  papers  are  relevant  ex- 
clusively to  the  perfecting  of  the  same  invention  in  prog- 
ress of  completion.     (Ib.) 

la 


146  FOREIGN  PATENT  LAWS. 

217.  INTRICATE  CASES. — All  cases  connected  with  the 
intricate  and  multifarious  proceedings  issuing  from  the 
working  of  a  law  of  patents  of  invention,  which  are  not 
specially  defined  and  provided  for  in  these  rules,  shall  be 
decided,  in  accordance  with  the  merits  of  each  case,  by 
authority  of  the  Commissioner  of  Patents,  and  the  de- 
cision shall  be  communicated  to  the  interested  parties 
through  the  departmental  correspondent  of  the  Patent 
Office.     (Ib.) 

218.  GENERAL  REMARKS. — The  correspondence  with 
the   department  is  carried  through  the  Canadian  mail 
free  of  postage.     The  forwarding  of  any  paper  should 
always   be   accompanied    by   a  letter,   and   a   separate 
letter  should  be  written  in  relation  to  each  distinct  sub- 
ject. 

It  is  particularly  recommended  that  reference  should 
be  made  to  the  law  before  writing  on  any  subject  to  the 
department,  in  order  to  avoid  unnecessary  explanations 
and  useless  loss  of  time  and  labor;  and  it  is  also  recom- 
mended in  every  case  to  have  the  papers  and  drawings 
prepared  by  a  competent  person,  for  the  interest  both  of 
the  applicant  and  of  the  public  service. 

A  sufficient  margin  should  be  left  on  paper,  and  espe- 
cially on  specifications  and  assignments,  for  the  insertion 
of  references  or  certificates  and  for  the  affixing  of  the 
seal  thereto. 

Although  it  is  optional  for  the  applicant  to  annex  draw- 
ings to  the  specification  of  a  caveat  or  not,  still  it  is  im- 
portant in  the  party  always  to  attach  drawings  to  the 
said  specification. 

It  must  be  remembered,  that  the  better  papers  are  ex- 
ecuted the  sooner  the  work  is  dispatched  at  the  office, 


CAPE  OF  GOOD  HOPE. 


147 


and  the  surer  the  regularity  of  the  proceedings  is  guar- 
antied. 

It  must  be  remembered,  when  drawing  the  petition  for 
a  patent  of  inventions,  that  if  a  change  in  the  residence 
mentioned  has  taken  place  during  the  year  next  to  the 
date  of  the  petition,  the  change  or  changes  should  be 
mentioned,  in  accordance  with  the  twelfth  section  of  the 
patent  act  of  1869.  (76.) 


XIX.  Cape  of  Good  Hope. 


SEC. 

219.  Law,  date,  and  where  recorded. 

220.  Kinds  of  patents. 

221.  Duration. 

222.  Government  fees. 


SEC. 

223.  Documents,  where  to  be  left. 

224.  Assignments. 

225.  Specifications  and  drawings. 

226.  Other  legal  provisions. 


219.  LAW,  DATE,  AND  WHERE  RECORDED. — Act  No.  17, 
of  1860,  dated  30th  August,  1860.     (See  Commissioners  of 
Patents'  Journal,  vide  supra  71,  No.  727,  An.,  1860.) 

220.  KINDS  OF  PATENTS. — Letters  patent  granted  to 
the  true  and  first  inventor.     Disclaimer  and  alterations. 
English  patents  granted  before  the  1st  July,  1860,  to  be 
valid  in  the  colony. 

221.  DURATION. — Fourteen  years.    Patents  to  expire  at 
the  end  of  the  third  or  seventh  year,  if  the  requisite  pay- 
ments are  not  made.     Letters  patent  for  foreign  inven- 
tions not  to  continue  after  expiration  of  foreign  patent. 
Extension  for  a  term  not  exceeding  fourteen  years  after 
the  expiration  of  the  first  term. 

222.  GOVERNMENT  FEES. — On  deposit  of  specification, 
£2  105.;  to  the  Attorney  General  for  any  appointment, 
£2  4s.  6d. ;  on  obtaining  letters  patent,  £2  105. ;  at  or 


148  FOREIGN  PATENT  LAWS. 

before  the  "expiration  of  third  year,  £10;  at  or  before  the 
expiration  of  seventh  year,  £20 ;  to  the  Attorney  General 
with  particulars  of  objections,  £2  4s.  6d.;  on  presenting 
petition  for  examination  or  confirmation,  £2  10s. ;  every 
search  and  inspection,  Is.;  entry  of  assignment  or  license, 
10s.;  certificate  of  assignment  or  license,  10s.;  filing 
memorandum  of  alteration  or  disclaimer,  £2  10s. ;  en- 
tering any  caveat,  £2  10s. ;  copy  or  extract  of  any  writing, 
per  common  law  folio,  Is. 

223.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
A  complete  specification  (two  copies)  and  drawings  and 
models,  if  any,  to  be  deposited  at  the  office  of  the  Colo- 
nial Secretary.     Notice  to  proceed  to  be  given  to  the 
Attorney  General  for  publication   in    the  government 
gazette  and  two  local  papers.     Grant  for  letters  patent 
issued  by  Attorney  General  after  one  month's   notice. 
Letters  patent,  bearing  date  of  deposit  of  specification, 
to  be  issued  within  three  months  after  said  warrant,  or 
during  the  protection. 

224.  ASSIGNMENTS. — Registered  as   above,  and  legal 
copies  thereof  to  be  had.     More  than  twelve  persons  may 
have  a  legal  and  beneficial  interest  in  one  patent. 

225.  ORIGINALS  OF  SPECIFICATIONS  AND  DRAWINGS,  DIS- 
CLAIMERS, &c. — To  be  filed  at  the  end  of  six  months,  at 
a  proper  office,  with  indexes,  registers,  &c.,  for  public 
inspection. 

226.  OTHER  LEGAL  PROVISIONS. — Patent  of  true   in- 
ventor not  to  be  affected  by  specification  of  pretended 
inventor.     Letters  patent  may  be  repealed  or  withheld 
and  sjrocification  canceled  by  writ  of  the  supreme  court, 
in  the  nature  of  a  writ  of  scire  facias  in  England.     Let- 
ters patent  not  to  prevent  the  use  of  invention  in  foreign 


CEYLON.  149 

ships  resorting  to  ports  in  the  colony.     Penalty  for  un- 
authorized uses  of  word  "patent,"  £100. 

XX.  Ceylon. 


SEC. 

227.  Law,  date,  and  where  recorded. 

228.  Kinds  of  patents. 

229.  Duration. 

230.  Government  fees. 


SEC. 


231.  Documents,  where  to  be  left. 

232.  Specification,  inspec'n,  copies. 

233.  Assignments. 

234.  Other  legal  provisions. 


227.  LAW,  DATE,  AND  WHERE  RECORDED. — Inventions 
ordinance,  1859.     (See  Commissioners  of  Patents'  Journal, 
vide  supra  71,  No.  684,  An.,  1860.) 

228.  KINDS  OF  PATENTS. — Patents  for  invention  and 
importation.     English  patents  granted  prior  to  the  date 
of  this   ordinance   admissible.     Prerogative  of  Crown 
saved. 

229.  DURATION. — Fourteen  years.     Extension  of  four- 
teen years  more  on  petition  presented  not  more  than 
one  year  and  not  less  than  six  months  before  the  expira- 
tion of  original  term. 

230.  GOVERNMENT  FEES. — Stamp  of  petition,  £10. 

231.  DOCUMENTS  REQUIRED  AND  WHERE  TO  BE  LEFT. — 
Petition  of  the  inventor,  or  his  authorized  agent,  ad- 
dressed to  the  Government,  for  leave  to  file  specification, 
to  be  left  with  the  Colonial  Secretary  of  Government. 
Crown  to  refer  petition  for  inquiry  and  report.     Specifi- 
cation and  declaration  signed  by  inventor  or  his  proxy. 

232.  SPECIFICATION,  INSPECTION  AND  COPIES  OF.— At 
the  office  of  the  Colonial  Secretary.    Fee,  55.    Certificate 
copies  to  be  prima  facie  evidence. 

283.  ASSIGNMENTS. — Registered  at  the  office  of  the 
13* 


150  FOREIGN  PATENT  LAWS. 

Colonial  Secretary,  and  open  to  public  inspection  without 
fee. 

234.  OTHER  LEGAL  PROVISIONS. — False  statement  in 
declaration  punishable  as  perjury.  Invention  not  pub- 
licly used  or  known  before  application  to  file  specifica- 
tion, or  known  only  by  fraudulent  means,  to  be  deemed 
new  invention.  Exclusive  jurisdiction  vested  in  the 
district  court  of  Colombo.  Causes  of  forfeiture :  Inven- 
tion not  new;  petitioner  not  the  inventor;  invention  not 
described  in  specification;  fraud  in  petition  or  specifica- 
tion; false  statement  in  petition ;  fraudulent  misdescrip- 
tion  of  part  of  invention  in  specification.  Actual  in- 
ventors entitled  to  assignment  of  an  exclusive  privilege 
fraudulently  obtained. 


XXI.  Cuba,  Porto  Rico,  and  the  Philippine  Islands. 


SEC. 

235.  Law,  date,  and  where  recorded. 

236.  Kinds  of  patents. 

237.  Duration. 

238.  Documents,  where  to  be  left. 


SEC. 

239.  Government  fees. 

240.  Specifications,  inspection  of. 

241.  Assignments. 

242.  Working. 


235.  LAW,  DATE,  AND  WHERE  RECORDED. — Royal  decree 
of  the  30th  July,  1833.     (See  Commissioners  of  Patents' 
Journal,  vide  supra  71,  N"o.  498,  An.,  1858.) 

236.  KINDS  OF  PATENTS. — Letters  patent  for  inventions, 
improvements,  and  importation,  (the  latter  under  certain 
restrictions  when  relating  to  agriculture.)     Letters  pat- 
ent to  be  taken  up  by  their  owner  within  three  months 
of  application. 

237.  DURATION. — Patent  for  invention,  five,  ten,  and 
fifteen  years;  patent  for  importation,  five  years;  exten- 


FRANCE. 


151 


sion,  five  years  for  patent  of  invention  of  five  years,  to 
be  reckoned  from  the  day  of  delivery. 

238.  DOCUMENTS  REQUIRED  AND  WHERE  TO  BE  LEFT. — 
A  petition  of  the  inventor,  or  his  agent,  addressed  to  the 
Governor  General  of  Cuba,  together  with  a  correct  de. 
scription,  plan,  or  model,  (all  sealed  up.)     Grants  of  pat- 
ents to  be  published  in  the  government  papers  and  in 
the  Madrid  Gazette. 

239.  GOVERNMENT  FEES. — Patent  of  five  years,  $70 
(pesos;)  patent  of  ten  years,  $210  (pesos;)  patent  of  fif- 
teen years,  $420  (pesos ;)  patent  of  importation,  $210  (pe- 
sos ;  besides  $8  for  delivery  of  letters  patent. 

240.  SPECIFICATIONS,  INSPECTION  OF. — Public  register  at 
the  chambers  of  commerce.     Specification  and  models 
open  to  the  public  after  expiration  of  patent. 

241.  ASSIGNMENTS. — Certificates  of  assignments  to  be 
delivered  within  sixty  daj-s  from  their  date. 

242.  WORKING. — Not  to  be  interrupted  for  one  year 
and  one  day. 


XXII.  France. 


SEC. 

243.  Law,  date,  and  where  recorded. 

244.  Kinds  of  patents. 

245.  Previous  examination. 

246.  Duration. 

247.  Government  fees. 

248.  Documents  required,  and  where 

to  be  left. 

249.  Working  and  prolongation. 

250.  Assignments. 


SEC. 

251.  Specifications,   inspection   and 

copies  of. 

252.  List  of  patents  delivered. 

253.  Specifications  published. 

254.  Originals      of      specifications, 

(models.) 

255.  Jurisdiction,  local  proceedings. 

256.  Proceedings  to  obtain  a  patent. 

257.  Form  of  French  letters  patent. 


243.  LAW,  DATE,  AND  WHERE  RECORDED. — Royal  decree 


152  FOREIGN  PATENT  LAWS. 

of  5th  July,  1844.     (See  Commissioners  of  Patents'  Jour- 
nal,  vide  supra  71,  Nos.  228,  229,  947,  948,  and  949.) 

244.  KINDS  OF  PATENTS. — Patents  of  invention  and  cer- 
tificates of  addition  for  France  and  the  French  Colonies 
granted  to  natives  or  foreigners  residing  or  represented 
in  France.     (Certificates  of  addition  preferably  to  the 
original  patentee  within  the  first  year.) 

245.  PREVIOUS  EXAMINATION. — None.     Neither  medi- 
cines nor  financial  schemes  can  be  patented.     Patent  ar- 
ticles to  bear  the  mark  "  S.  g.  d.  G.,"  (without  guaranty 
of  the  Government,)  under  a  penalty  of  from  £2  to  £40. 

246.  DURATION. — Five,  ten,  or  fifteen  years  from  the 
date  of  deposit.     Foreign  inventions  according  to  the 
term  of  the  original  foreign  patent. 

247.  GOVERNMENT  FEES. — One  hundred  francs  each 
year.     In  case  of  transfer,  the  whole  term  originally  de- 
manded must  be  paid  at  once.     Certificates  of  addition, 
twenty  francs.     (1  fr.=10d.) 

248.  DOCUMENTS  REQUIRED  AND  WHERE  TO  BE  LEFT. — 
A  petition  of  the  inventor,  or  his  proxy,  to  the  Minister 
of  Commerce  and  Public  Works;  a*  specification,  (two 
copies,)  drawings,  (two  copies,)  on  a  metrical  scale,  or  spe- 
cimens ;  an  acknowledgment  of  the  receipt  of  one  hun- 
dred francs  paid  to  the  Receveur  General ;  a  memoran- 
dum of  the  various  documents  deposited  at  the  secretariat 
of  the  respective  prefecture ;  at  Paris,  at  the  Hotel  de 
Ville.     In  the  Colonies,  three  copies  of  said  documents 
to  be  delivered  to  the  Director  of  the  Interior. 

249.  WORKING  AND  PROLONGATION. — Working  within 
two  years;  not  to  be  interrupted  for  two  years.     Pro- 
longation only  by  a  special  law. 

250.  ASSIGNMENTS. — Made  before  notary  public  and 


FKANCE.  153 

registered  at  the  prefecture ;  a  register  also  kept  at  the 
Ministry  of  Agriculture  and  Commerce.  In  the  Colonies, 
assignments  are  registered  at  the  office  of  the  Director  of 
the  Interior. 

251.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF. — In- 
spection fee,  at  the  Ministry  of  Commerce  and  Public 
Works ;  copies  on  payment  of  twenty-five  francs ;  draw- 
ings extra;   copies   of  certificates   of  addition   twenty 
francs. 

252.  LIST  OF  PATENTS  DELIVERED. — Published  monthly 
within  six  months  of  the  date  of  application;  also  in  the 
Commissioners  of  Patents'  Journal. 

253.  SPECIFICATIONS  PUBLISHED. — After  payment  of 
the  second  annual  fee,  in  full  or  in  the  form  of  extracts. 
Kept  at  the  Secretariat  of  the  Prefecture  of  each  Depart- 
ment, also  at  the  Public  Free  Library  of  the  Patent 
Office,  together  with  alphabetical  and  subject-matter  in- 
dexes of  all  the  specifications  published  under  the  old 
law  of  1791  and  new  law  of  1844. 

254.  ORIGINALS  OF  SPECIFICATIONS,  (MODELS.) — Depos- 
ited, at  the  expiration  of  the  patent,  in  the  library  of  the 
Conservatoire  des  Arts  et  Metiers. 

255.  JURISDICTION  AND  LOCAL  PROCEEDINGS. — Actions 
to  be  tried  before  the  Tribunaux  Civils  de  Premiere  In- 
stance, according  to  article  405  and  following  of  the  Code 
Civil;  in  the  Colonies,  before  the  court  of  appeal.    Fines 
for  infringement,  from  £4  to  £80,  with  seizure  of  the 
goods  or  machines,  damages  to  the  patentee,  and  costs 
of  publication  of  judgment;  in  case  of  a  second  offense, 
imprisonment  of  from  one  to  six  months,  according  to 
article  463  of  the  Penal  Code. 

256.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — The  appli- 


154  FOREIGN  PATENT  LAWS. 

cant  must  deposit  at  the  office  of  the  Secretary  of  the 
Prefect  of  the  Seine,  (au  Secretariat  de  la  Prefecture^)  or  in 
the  provinces  at  the  departmental  prefectures,  a  sealed 
packet,  containing  the  following  documents,  which  must 
be  in  the  French  language,  and  without  alterations  or 
interlineations;  any  words  erased  must  be  counted  and 
verified  with  the  initials  of  the  applicant  and  references 
to  the  pages;  and  when  stating  weights  or  measures 
those  only  must  be  employed  which  are  decreed  by  the 
law  of  the  4th  July,  1837: 

1.  A  letter  to  the  Minister  of  Agriculture  and  Com- 
merce, containing  a  request  for  a  patent. 

2.  A  description  of  the  discovery,  invention,  or  appli- 
cation forming  the  subject  of  the  patent. 

3.  A  duplicate  of  the  same. 

4.  The  drawings  or  patterns  necessary  for  understand- 
ing the  description. 

5.  A  duplicate  of  the  same. 

6.  A  list  of  the  above  documents. 

The  request  for  a  patent  must  be  limited  to  one  prin- 
cipal object,  with  its  constituent  details  and  proposed 
application. 

It  shall  mention  the  number  of  years  for  which  the 
patent  is  solicited,  and  contain  neither  restrictions,  con- 
ditions, nor  reserves. 

It  shall  indicate  by  a  title  the  summary  and  precise 
designation  of  the  object  invented. 

The  drawings  must  be  traced  in  ink,  according  to  a 
metrical  scale. 

All  the  documents  must  be  signed  by  the  applicant  or 
his  agent.  An  agent  must  be  authorized  by  a  written 
power  of  attorney.  This  power  ought,  according  to  the 


FRANCE.  155 

regulations,  to  be  legalized,  but  in  practice  this  is  not 
required. 

Besides  the  sealed  packet  containing  the  above  docu- 
ments, the  applicant  must  hand  in  a  receipt  for  one 
hundred  francs,  being  the  first  year's  payment  of  the 
patent  tax.  The  Paris  office,  at  which  these  payments 
are  to  be  made,  is  that  of  the  Receveur  Central,  Rue 
Neuve  des  Mathurins,  ~No.  36. 

These  requirements  fulfilled,  the  applicant  receives  a 
certificate  stating  the  day  and  hour  of  depositing  the 
documents.  The  patent  commences  from  this  date. 

The  documents  are  then  transmitted  by  the  prefect  to 
the  Minister  of  Agriculture  and  Commerce,  and  the  pat- 
ent is  returned  to  the  applicant  in  regular  order.  The 
patent  consists  in  a  decree  of  the  minister  declaring  the 
regularity  of  the  patent,  accompanied  by  one  of  the 
copies  of  the  description  and  drawings,  duly  certified. 

The  patent  is  delivered  at  the  risk  of  the  applicant, 
and  without  guaranty  from  the  Government  either  as 
to  the  reality,  the  novelty,  or  the  merit  of  the  invention, 
or  the  accuracy  of  the  description. 

257.  FORM  OF  FRENCH  LETTERS  PATENT. — 

Patent  of  Invention  without  guaranty  of  the  Government. 

The  Minister  Secretary  of  State,  at  the  Department  of  Agriculture,  Com- 
merce, and  Public  Works,  considering  the  law  of  the  5th  July,  1844,  con- 
sidering the  declaration  made  on  the  ,  at  forty  minutes 
past  three,  at  the  office  of  the  Secretary  General  of  the  Preference  of  the 
Department  of  ,  and  which  establishes  the  delivery  made 
by  ,  of  an  application  for  a  patent  of  invention  for  [title  of  the 
patent],  decrees  as  follows : 

ART.  1.  A  patent  of  invention  for  -  years,  to  begin  from  , 

for  [title]  is  herewith  delivered  to  ,  without  previous  examina- 

tion, at  his  own  risk,  and  without  guaranteeing  either  the  reality,  novelty, 
or  merit  of  the  invention,  or  the  correctness  of  the  description. 


156 


FOREIGN  PATENT  LAWS. 


AET.  2.  The  present  decree  constituting  letters  patent  is  delivered  to 
prove  his  title.     This  decree  will  be  accompanied  with  one  of  the  dupli- 
cates of  the  description  delivered  in  support  of  the  application,  the  con- 
formity between  the  descriptive  documents  having  been  duly  established. 
PAEIS,  the 

For  the  Minister  and  by  Delegation 
the  Director  of  the  Commerce  of  the  Interior. 
[Signed]  E.  JULIEN. 


For  true  copy, 

[L.  8.] 


The  Chief  Clerk, 
L.  SMITH. 


XXIII.  Greece. 

258.  Government  may  grant  privileges  for  inventions. 

258.  GOVERNMENT  MAY  GRANT  PRIVILEGES  FOR  INVEN- 
TIONS.— According  to  a  law  passed  in  1843  the  Govern- 
ment is  empowered  to  grant  privileges  for  inventions, 
subject  to  the  approbation  of  the  Senate. 


XXIV.  British  G-uiana. 


SEC. 

259.  Law,  date,  and  where  recorded. 

260.  Kinds  of  patents. 

261.  Previous  examination. 

262.  Duration. 

263.  Government  fees. 


SEC. 

264.  Documents  required,  and  where 

to  be  left. 

265.  Assignments. 

266.  Originals  of  specifications,  &c. 

267.  Other  legal  provisions. 


259.  LAW,  DATE,  AND  WHERE  RECORDED. — Ordinance 
No.  13,  of  the  year  1861.     (See  Commissioners  of  Patents' 
Journal,  vide  supra  71,  No.  798,  An.,  1861.) 

260.  KINDS  OF  PATENTS. — Letters  patent  to  the  true 
and  first  inventor;  disclaimer  and  alterations;  under  the 
seal  of  the  colony.     English  patents  not  to  be  affected 
by  this  ordinance. 


BRITISH  GUIANA.  157 

261.  PREVIOUS  EXAMINATION. — By  the  Attorney  Gen- 
eral as  to  correctness  of  description. 

262.  DURATION. — Fourteen  years.     Patents  to  expire 
if  before  the  end  of  the  first  seven  years  the  required 
stamp  duty  has  not  been  paid.     Letters  patent  for  foreign 
invention  not  to  continue  after  expiration  of  foreign  pat- 
ent.    Extension  of  original  to  another  term  not  exceed- 
ing seven  years  by  six  months'  previous  notice. 

263.  GOVERNMENT  FEES. —  To  be  paid  at  the  Attorney 
General's  office:  On  examining  provisional  specification 
to  be  paid  on  filing  petition,  $25;  on  reporting  an  appli- 
cation for  letters  patent  after  notice  to  proceed,  $25 ;  on 
giving  notice  of  disclaimer  or  alterations,  $25 ;  on  enter- 
ing caveat,  $25.     Stamp  duties  to  be  paid  at  the  Government 
Secretary's  office:  On  notice  to  proceed,  $5;  on  the  seal- 
ing of  the  letters  patent,  $20;  on  the  letters  patent  or  a 
duplicate  thereof  before  the  expiration  of  the  seventh 
year,  $100;  on  petition  for  confirmation  or  prolongation 
of  patent,  $50;  on  the  sealing  of  grant  confirming  or 
prolonging  letters  patent,  $100.     Fees  to  be  paid  at  the 
Register  office:  On  recording  letters  patent,  5  cents;  on 
depositing  complete  specification,  including  copy,  $15; 
on  entering  disclaimer  or  alteration,  including  copy  and 
notification  in  the  official  gazette,  $10 ;  on  entering  ca- 
veat, including  copy  and  notification  in  the  official  ga- 
zette, $10.     For  copy  of  any  of  the  before-mentioned 
documents,  or  of  any  provisional  specification  deposited, 
per  page,  25  cents.     On  inspecting  register  of  patents, 
for  each  patent  and  all  documents  connected  therewith, 
48  cents.     (N.  B.  For  copies  of  drawing,  extra.) 

264.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
Petition,  affidavit,  and  provisional  (or  complete)  specifi- 

14 


158 


FOREIGN  PATENT  LAWS. 


cation,  by  inventor  or  his  proxy,  to  "be  left  at  the  office  of 
the  Government  Secretary  for  provisional  protection 
during  twelve  months.  Provisional  protection  and  no- 
tice to  proceed  to  be  advertised  in  the  official  gazette. 
Warrant  to  be  issued  after  one  month's  notice. 

265.  ASSIGNMENTS. — Registered  as  above. 

266.  ORIGINALS  OF  SPECIFICATIONS,  DISCLAIMERS,  DRAW- 
INGS, &c. — To  be  copied  in  the  register  of  patents  at  the 
end  of  twelve  months,  and  kept  at  a  proper  office,  with 
indexes,  &c.,  for  public  inspection. 

267.  OTHER  LEGAL  PROVISIONS. — Letters  patent  not  to 
prevent  the  use  of  invention  in  foreign  ships  resorting 
to  ports  in  the  colony,  (provided  English  ships  enjoy  the 
same  privilege  in  the  respective  foreign  ports.) 


XXV.  India. 


SEC. 

268.  Law,  date,  and  where  recorded. 

269.  Kinds  of  patents. 

270.  Duration. 

271.  Government  fees. 

272.  Documents,  where  to  be  left. 

273.  Extension. 

274.  Disclaimer. 

275.  Specification,  inspection,  copies. 

276.  Assignments. 

277.  List  of  patents  delivered. 


SEC.   ' 

278.  Jurisdiction. 

279.  Chief  legal  provisions. 

280.  Proceedings  to  obtain  a  patent. 

281.  Form  of  petition. 

282.  Form  of  declaration  to  accom- 

pany petition. 

283.  Form  of  declaration  to  accom- 

pany specification. 

284.  Form  of  declaration  by  agent. 

285.  Form  of  petition. 


268.  LAW,   DATE,  AND  WHERE   RECORDED. — Act  XV, 
An.,  1859.     Dated  Osborne,  19th  March,  1859.     Promul- 
gated in  India  on  the  21st  May,  1859.     (See  Commission- 
ers of  Patents'  Journal,  vide  supra  71,  !S"os.  552  and  578.) 

269.  KINDS  OF  PATENTS. — Exclusive  privileges  granted 
to  the  original  inventor,  whether  a  native  or  alien,  or  his 


INDIA.  159 

authorized  agent  in  India,  subject,  however,  to  any  such 
conditions  and  restrictions  as  the  Governor  General  may 
think  expedient. 

270.  DURATION. — Fourteen  years  from  the  date  of  filing 
the  specification. 

271.  GOVERNMENT  FEES. — A  stamp  duty  of  one  hun- 
dred rupees  on  the  petition  for  leave  to  file  a  specifica- 
tion, and  a  reasonable  fee  for  an  inquiry  and  report,  if 
any,  on  the  petition. 

272.  DOCUMENTS  REQUIRED  AND  WHERE  TO  BE  LEFT. — 
A  petition  of  the  inventor,  or  his  authorized  agent  in 
India,  to  the  Governor  General  of  India  in  Council,  for 
leave  to  file  a  specification ;  a  declaration  of  the  original 
inventor,  or,  if  absent,  of  his  agent;  a  specification,  with 
drawings,  (five  copies,)  within  six  months  of  the  order 
authorizing  the  filing  of  the  specification.     To  be  left 
with  the  Secretary  to  the  Government  of  India  in  the 
Home  Department. 

273.  EXTENSION. — By  the  Governor  General  in  Coun- 
cil, for  a  further  term,  not  exceeding  fourteen  years  from 
the  expiration  of  the  fourteen  years,  upon  petition,  to  be 
presented  at  any  period  not  more  than  one  year  and  not 
less  than  six  calendar  months  before  the  expiration  of 
the  exclusive  privilege. 

274.  DISCLAIMER. — Petitioner,  after  the  filing  of  his 
specification,  may  apply  for  leave  to  file  amended  speci- 
fication, having  the  same  effect  as  the  specification  first 
filed. 

275.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF. — At 
the  Government  of  India  in  the  Home  Department,  of 
Bengal,  of  Fort  St.  George,  of  Bombay,  of  the  North- 
western Provinces.     Open  to  public  inspection  on  pay- 


160  FOREIGN  PATENT  LAWS. 

ment  of  one  rupee.  Copies  to  be  had  at  the  office  of  the 
Secretary  to  the  Government  of  India  on  paying  the 
expense  of  copying. 

276.  ASSIGNMENTS. — Original  inventors  have  power  to 
assign  their  patents  to  other  parties.     Patents,  however, 
fraudulently  obtained,  must,  on  the  complaint  of  the 
original  or  actual  inventor,  made  within  two  years  of  the 
filing  of  specification,  be  assigned  to  the  latter,  the  profits 
thereof,  at  the  same  time,  having  to  be  accounted  for  and 
paid  over  to  the  said  original  or  actual  inventor. 

277.  LIST  OF  PATENTS  DELIVERED. — Open  at  the  office 
of  the  Secretary  to  the  Government  of  India  on  payment 
of  one  rupee.     Published  in  the  Commissioners  of  Patents' 
Journal. 

278.  JURISDICTION. — Her  Majesty's  courts  of  judica- 
ture. 

279.  CHIEF  LEGAL  PROVISIONS. — No  person  is  entitled 
to  an  exclusive  privilege  if  the  invention  is  of  no  utility, 
if  invention  is  not  new,  if  the  petitioner  is  not  the  invent- 
or, if  the  specification  does  not  describe  the  invention, 
if  petition  or  specification  contains  fraudulent  mis-state- 
ments (false  statements  in  declaration  being  punishable 
as  perjury.)     Exclusive  privilege  to  cease  if  the  Govern- 
ment declares  it  mischievous,  &c.,  to  the  public,  or  if  the 
Government,  upon  breach  of  condition  proved,  declares 
that  it  shall  cease.     Importer  of  an  invention,  if  not  the 
actual  inventor,  not  to  be  deemed  the  inventor.     An  in- 
vention not  publicly  used  or  known  in  the  United  King- 
dom or  in  India,  before  the  application  for  leave  to  file 
the  specification,  to  be  deemed  a  new  invention,  (the  right 
of  the  original  inventor  being  still  reserved  during  the 
first  six  months.)    Defect  in  specification  or  petition,  or 


INDIA.       :  ^o  161 

want  of  novelty  in  invention,  &c.,  no  defense  to  action 
for  infringement.  The  actual  use  of  an  invention  in  In- 
dia or  the  United  Kingdom,  before  date  of  petition,  a 
defense  to  such  action.  Amendment  of  specification 
may  be  ordered  by  the  court.  Certified  copy  to  be  prima 
facie  evidence. 

280.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — The  inventor 
of  any  new  manufacture  may  petition  the  Governor  Gen- 
eral of  India  in  Council  for  leave  to  file  a  specification. 
The  petition  must  be  in  writing,  signed  by  the  petitioner, 
or,  iu  case  of  his  absence  from  India,  by  his  authorized 
agent,  and  shall  state  the  name,  addition,  and  place  of 
abode  of  petitioner,  and  the  nature  of  the  invention.  (§  1.) 

281.  FORM  OF  PETITION. — 

To  the  Governor  General  of  India  in  Council: 

The  petition  of  [here  insert  name,  addition,  and  place  of  residence],  for 
leave  to  file  a  specification  under  act  No. 

Showeth, 

That  your  petitioner  is  in  possession  of  an  invention  for  [state  title  of  in- 
vention], which  invention  he  believes  will  be  of  public  utility ;  that  he  is 
the  inventor  thereof,  [or,  as  the  case  may  be,  the  assignee,  or  the  executor  or 

*   L         '  t7  «7 

administrator  of  the  inventor;]  and  that  the  same  is  not  publicly  known  or 
used  in  India  or  any  part  of  the  United  Kingdom  of  Great  Britain  and 
Ireland,  to  the  best  of  his  knowledge  and  belief. 

The  following  is  a  description  of  the  invention,  [here  describe  it.] 

Your  petitioner  therefore  prays  for  leave  to  file  a  specification  of  the 
said  invention,  pursuant  to  the  provision  of  Act  No. 

And  your  petitioner,  &c. 

The  day  of 

[Signed.] 

On  such  a  petition  the  Governor  General  may  make 
an  order  authorizing  the  petitioner  to  file  a  specification. 

Before  making  such  order  the  Governor  General  in 
Council  may  refer  the  petition  to  any  person  or  persons 
for  inquiry  and  report,  the  fee  for  which  is  to  be  paid,  the 
14* 


162  FOREIGN  PATENT  LAWS. 

amount  of  which,  in  case  of  dispute,  to  be  settled  by  one 
of  the  courts  of  judicature  in  a  summary  manner.  (§  3.) 

On  obtaining  such  order  the  petitioner  may,  within  six 
months,  cause  a  specification  of  his  invention  to  be  filed, 
and,  having  done  so,  he  and  his  legal  representatives  shall 
have  a  right  to  the  exclusive  use,  &c.,  of  his  invention  for 
fourteen  years,  and  for  a  further  term  of  not  exceeding 
fourteen  years,  should  the  Governor  General  in  Council 
so  direct,  upon  petition  from  inventor,  presented  not  more 
than  a  year  nor  less  than  six  calendar  months  before  the 
expiration  of  the  first  period  of  privilege.  (§  4.) 

The  order  may  be  made  subject  to  such  restrictions  as 
the  Governor  General  in  Council  may  think  expedient. 
(§5.) 

The  specification  shall  be  in  writing,  it  shall  be  signed 
by  petitioner,  and  shall  particularly  describe  the  nature 
of  the  invention  and  in  what  manner  the  same  is  to  be 
performed.  (§  6.) 

The  petition  and  specification  shall  be  left  with  the  Sec- 
retary to  the  Government  of  India  in  the  Home  Depart- 
ment, and  each  petition  and  specification  shall  be  accom- 
panied by  a  declaration  in  writing  in  the  following  forms : 

282.  FORM  OF  DECLARATION  TO  ACCOMPANY  PETITION. — 

I,  [name,  addition,  and  place  of  residence,]  do  solemnly  and  sincerely 
declare,  that  I  am  in  possession  of  an  invention  for  [title] ;  that  I  believe 
the  said  invention  will  be  of  public  utility ;  that  I  am  the  inventor  there- 
of, [or  the  assignee,  or  executor,  or  administrator  of  the  inventor,]  and  that 
the  same  is  not  publicly  known  or  used  in  India  or  in  any  part  of  the 
United  Kingdom  of  Great  Britain  and  Ireland,  to  the  best  of  my  knowl- 
edge and  belief;  and  that,  to  the  best  of  my  knowledge  and  belief,  my  said 
invention  is  truly  described  in  my  petition  for  leave  to  file  a  specification 
thereof. 

The  day  of 

[Signed,] 


INDIA.  163 

283.  FORM  OF  DECLARATION  TO  ACCOMPANY  SPECIFICA- 
TION.— 

I,  [name,  addition,  and  residence,]  do  solemnly  and  sincerely  declare,  that 
I  am  in  possession  of  an  invention  for  [nature  of  invention] ;  which  inven- 
tion I  believe  will  be  of  public  utility ;  that  I  am  the  inventor  thereof, 
[or  the  assignee,  executor,  or  administrator  of  the  inventor,]  and  that  the 
same  is  not  publicly  known  or  used  in  India  or  in  any  part  of  the  United 
Kingdom  of  Great  Britain  and  Ireland,  to  the  best  of  my  knowledge  and 
belief;  and  that,  to  the  best  of  my  belief,  the  instrument  in  writing  under 
my  hand,  herewith  annexed,  particularly  describes  and  ascertains  the 
nature  of  the  said  invention  and  in  what  manner  the  same  is  to  be  per- 
formed. 

The  day  of  " ;". ,  • 

[Signed.] 

If  the  inventor  be  absent  from  India,  the  petition  and 
specification  are  to  be  accompanied  also  by  a  declaration 
from  the  agent,  to  the  effect  that  he  verily  believes  that 
the  declaration  was  signed  by  the  inventor  and  that  the 
contents  are  true.  The  agent's  declaration  is  to  be  in 
similar  form  to  that  of  the  inventor,  and  the  date  of  de- 
livery of  the  petition  and  specification  is  to  be  indorsed 
on  them  and  recorded  at  the  office  of  the  secretary.  Any 
false  statement  in  such  declaration  is  punishable  as  per- 
jury. (§§7,8.) 

284.  FORM  OF  DECLARATION  BY  AGENT  WHEN  AN  IN- 
VENTOR is  ABSENT  FROM  INDIA. — 

I,  ,  of  ,  do  solemnly  and  sincerely  declare,  that 

I  have  been  appointed  by  the  said  his  agent,  for  the 

purpose  of  ;  and  I  verily  believe  that  the  declaration  purport- 

ing to  be  the  declaration  of  the  said  ,  marked  (          ),  was 

signed  by  him,  and  that  the  contents  thereof  are  true. 

The  day  of 

[Signed.] 

The  fees  under  the  act,  and  also  the  fees  (if  any)  of  the 
person  to  whom  the  petition  may  have  been  referred, 


164  FOREIGN  PATENT  LAWS. 

must  be  paid  before  filing  the  specification.  (§  9.)  No 
fee  is  mentioned  in  the  act,  the  only  stipulation  being 
that  the  petition  for  the  original  grant  of  exclusive  privi- 
lege or  for  its  extension  must  be  written  on  stamped 
paper  of  the  value  of- 100  rupees,  (£10.)  (§  37.) 

An  inventor  having  obtained  letters  patent  in  the 
United  Kingdom  may,  within  twelve  calendar  months 
from  the  date  of  the  letters  patent,  petition  the  Governor 
General  for  the  exclusive  privilege  in  India.  He  must 
state  in  his  petition  that  such  letters  patent  have  been 
granted,  with  the  date  and  term  during  which  they  are 
to  be  in  force.  The  Indian  privilege  will  cease  in  case 
of  the  revocation  of  the  original  letters  patent,  and  shall 
not  exceed  the  original  term,  unless  the  same  be  renewed. 
(§  20.) 

285.  FORM  OF  PETITION. — 

That  your  petitioner  [or  that  A.  B.,  of  whom  your  petitioner  is  the  as- 
signee, or  executor,  or  administrator]  has  obtained  Her  Majesty's  letters  pat- 
ent, dated  the  day  of  ,  for  [title  of  invention],  and  that 
such  letters  patent  are  to  continue  in  force  for  years ;  that  your 
petitioner  believes  that  the  said  invention  is  not  now  and  has  not  hitherto 
been  publicly  known  or  used  in  India. 

The  following  is  a  description  of  the  invention,  [here  describe  it.] 

Your  petitioner  therefore  prays  for  leave  to  file  a  specification  of  the 
said  invention,  pursuant  to  the  provisions  of  act  No. 

And  your  petitioner,  &c. 

The  day  of 

[Signed.] 

XXVI.  Italy 


SEC. 

286.  Law,  date,  and  where  recorded. 

287.  Kinds  of  patents. 

288.  Previous  examination. 

289.  Duration. 


SEO. 

290.  Government  fees. 

291.  Documents  required,  and  where 

to  be  left. 

292.  Working  and  prolongation. 


ITALY. 


165 


SEO.  SEC. 

293.  Annulment.  298.  Specifications  published. 

294.  Infringements.  299.  Proceedings  to  obtain  a  patent. 

295.  Assignments.  300.  Petition. 

296.  Specifications,  inspection    and     301.  Description. 

copies  of.  302.  Memorandum. 

297.  List  of  patents  delivered. 

286.  LAW,  DATE,  AND  WHERE  RECORDED. — Koyal  decree 
of  31st  January,  1864.     (See  Commissioners  of  Patents' 
Journal,  vide  supra  71,  Nos.  1061,  1064,  636,  1656. 

287.  KINDS  OF  PATENTS. — Patent  certificates,  (letters 
patent;)   certificates  of  addition;   certificates  of  reduc- 
tion, (disclaimers;)  certificates  of  prolongation;  delivered 
to  natives  or  aliens  residing  or  represented  in  Italy. 

288.  PREVIOUS  EXAMINATION. — None  as  to  novelty  and 
utility,  except  with  regard  to  inventions  concerning  bev- 
erages and  food,  which  are  to  be  referred  to  the  board 
of  health. 

289.  DURATION. — From  one  to  fifteen  years,  to  begin 
from  the  last  day  of  either  March,  June,  September,  or 
December  which  follows  nearest  to  the  day  of  applica- 
tion.    Foreign  patents  not  to  exceed  their  term  allowed 
abroad.     Original  term  of  less  than  fifteen  years  pro- 
longed to  fifteen  years. 

290.  GOVERNMENT  FEES. — A  proportional  tax  of  as 
many  10  lire  as  there  are  years  in  the  duration  of  the  re- 
spective patent,  and  an  annual  tax  of  40  lire  for  each  of 
the  first  three  years;  65  lire  for  each  of  the  fourth,  fifth, 
and  sixth  years;  90  lire  for  each  of  the  seventh,  eighth, 
and  ninth  years;  115  lire  for  each  of  the  tenth,  eleventh, 
and  twelfth  years;  and  140  lire  for  each  of  the  last  three 
years.     The  first  annuity  and  proportional  tax  to  be  paid 
at  the  time  of  application.     Certificates  of  addition,  20 


166  FOREIGN  PATENT  LAWS. 

lire;  certificates  of  prolongation,  40  lire;  certificates  of 
reduction,  (disclaimers  to  be  filed  within  the  first  six 
months,)  40  lire;  extra  copy  of  any  certificate,  15  lire; 
(1  lira=8rf.) 

291.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
An  application  of  the  inventor,  or  his  proxy,  to  the  Min- 
ister of  Finances;  a  description,  in  French  or  Italian, 
and  drawings,  (three  copies,)  or  a  model  and  two  draw- 
ings; a  receipt  for  the  fees  paid  into  the  treasury.     Orig- 
inal or  legalized  copy  of  foreign  letters  patent.     A  mem- 
orandum of  the  documents  and  objects  delivered.     To 
be  left  at  the  Ministry  of  Finances,  at  Florence.     Certifi- 
cates of  addition  granted  within  the  first  six  months,  in 
preference  to  original  patentees.     Deficiencies  in  docu- 
ments to  be  made  good  within  fifteen  daj^s.     Appeals 
(50  lire)  to  be  submitted  to  a  special  commission. 

292.  WORKING  AND   PROLONGATION. — Patents  of  five 
years  and  less  to  be  worked  within  one  year,  and  the 
working  not  to  be  interrupted  for  one  year.     Patents  of 
more  than  .five  years  to  be  worked  within  two  years,  and 
the  working  not  to  be  interrupted  for  two  years,  except 
by  showing  good  cause  for  delay. 

293.  ANNULMENT. — By  summary  process  before  the 
provincial  tribunals,  with  experts,  (if  desired.) 

294.  INFRINGEMENTS. — Punishable  by  a  fine  up  to  500 
lire,  and  confiscation  of  counterfeit  machines,  goods,  &c., 
for  the  benefit  of  the  patentee,  who  besides  may  claim 
damages.     Actions  not  to  be  delayed  beyond  a  week. 

295.  ASSIGNMENTS. — Registered  at  the  Central  Patent 
Office,  and  published  in  the  ofiicial  gazette,  on  the  pay- 
ment of  5  lire.     The  whole  patent  fees  to  be  paid  pre- 
vious to  registration. 


ITALY.  167 

296.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF. — At 
the  Central  Patent  Office,  three  months  after  the  deliv- 
ery of  certificates.      Copies  to  be  had  by  paying  for 
stamped  paper,  and  2  cents  per  line.     Drawings  extra. 

297.  LIST  OF  PATENTS  DELIVERED. — E  very  three  months, 
in  the  official  gazette  and  in  the  Commissioners  of  Patents' 
Journal.  ^ 

298.  SPECIFICATIONS  PUBLISHED.— Every  six  months,  in 
full  or  in  the  form  of  extracts.    Kept  at  the  Public  Free 
Library  of  the  Patent  Office. 

299.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — Applications 
for  patent  are  to  be  addressed  to  the  head  of  an  office  in 
the  Ministry  of  Finance  specially  appointed  for  the  pur- 
pose.    They  must  be  presented  by  the  inventor  or  his 
agent,  and  contain — 

1.  The  Christian  and  surname  of  the  inventor,  the 
place  of  his  birth  and  abode,  and  of  his  agent,  if  any. 

2.  A  summary  and  precise  designation  of  the  nature 
and  object  of  the  invention,  to  form  the  title  of  it. 

3.  The  number  of  years  for  which  the  patent  is  solic- 
ited. 

Each  application  must  be  for  one  patent  only,  and  one 
patent  cannot  include  several  inventions. 

The  following  documents  must  accompany  the  appli- 
cation : 

1.  The  description  of  the  invention  or  discovery. 

2.  The  drawings,  if  they  can  be  made,  as  well  as  the 
models  which  the  inventor  may  judge  useful  to  explain 
his  invention. 

3.  A  receipt  for  the  payment  into  the  public  treasury 
of  the  tax  due  on  the  patent. 

4.  The  original  or  copy  in  due  form  of  the  foreign 


168  FOREIGN  PATENT  LAWS. 

patent,  when  the  invention  shall  already  have  been  pat- 
ented abroad. 

5.  The  power  of  attorney  of  the  agent,  (if  any,)  which 
must  be  drawn  up  by  an  authentic  deed,  or,  if  by  pri- 
vate deed,  the  signature  of  the  inventor  must  be  certi- 
fied by  a  notary  or  by  the  syndic  of  his  place  of  resi- 
dence. 

6.  A  list  of  the  documents  thus  presented. 

The  description  must  be  in  French  or  Italian,  and  con- 
tain a  clear  and  complete  description,  such  as  will  enable 
a  person  conversant  with  the  subject  to  put  the  inven- 
tion into  practice. 

The  description  and  drawings  are  to  be  in  triplicate, 
the  applicant  alone  being  answerable  for  their  correct- 
ness; when  the  application  is  accompanied  by  a  model, 
the  copies  of  drawings  must  also  be  sent  in,  or  at  least 
drawings  of  such  parts  of  the  model  as  constitute  the 
invention. 

[NOTE. — A  recent  rule  requires  the  drawings  filed  with 
the  specification  to  be  executed  in  India  ink,  on  the 
smallest  practical  metrical  scale.  The  prescribed  sizes 
are:  First,  5|  inches  by  7|  inches;  second,  7|  inches  by 
llf  inches;  and  third,  llf  inches  by  15f  inches,  accord- 
ing to  the  character  of  the  invention.  Drawings  made 
to  a  larger  scale  than  the  officials  deem  necessary  will 
be  returned  to  the  applicant  for  reduction,  and  in  the 
meantime  the  application  will  be  suspended.] 

300.  PETITION. — 

[Stamp,  cent.  50.] 

To  the  Minister  of  Agriculture,  Industry,  and  Commerce: 

Mr.  Annibale  Ugazzi,  born  in  Turin,  and  residing  in  Milan,  [represented, 
as  the  case  may  be,  by  his  special  attorney,  Antonio  Arrisabini,  of  Bologna, 
and  residing  at  Naples,}  begs  to  apply  for  a  patent  of  six  years  for  his 


JAMAICA.  169 

invention,  entitled  [machine  for  carding  cotton],  with  a  view  of  acquiring 
the  legal  right  of  exclusively  using  his  invention  or  industry,  and  also  of 
exclusively  manufacturing  and  selling  the  same. 
[Date  of  application.] 

[Signature  of  applicant.] 

301.  DESCRIPTION. — 

[Stamp,  50  cent.]  \ 

Description  of  the  invention  entitled  [machine  for  carding  cotton]. 
[Here  follows  description.] 

[Signature  of  applicant.] 

The  Secretary. 

302.  MEMORANDUM. — 

[Stamp,  50  cent.] 

Memorandum  of  the  papers  and  objects  delivered  by  Mr.  Annibale 
Ugazzi,  [represented,  as  the  case  may  be,  by  his  special  attorney,  Mr.  Alfonso 
Reccaboni,]  at  the  office  of  the  secretary  of  the  prefecture  of  , 

for  the  purpose  of  obtaining  a  patent  for  an  invention  entitled  [machine 
for  carding  cotton]. 

1st.  The  application. 

2d.  Three  copies  of  the  description. 

3d.  Three  copies  of  drawings  in  six  sheets,  or  two  copies  of  drawings  in 
four  sheets,  and  a  model. 

4th.  The  receipt  for  the  due  payment  of  the  tax. 

5th.  The  present  memorandum. 

[If  other  documents  are  filed,  state  them.] 

[Date  of  application.] 

[Signature  of  the  applicant.] 


XXVII.  Jamaica. 


SEC. 

303.  Law,  date,  and  where  recorded. 

304.  Kinds  of  patents. 

305.  Previous  examination. 

306.  Documents  required,  and  where 

to  be  left. 

307.  Working. 

308.  Duration. 

15 


SEC. 

309.  Assignments. 

310.  Specifications,  inspection    and 

copies  of. 

311.  Penalty  for  use,  or  for  imita- 

$ion,  or  counterfeit  without^ 
consent. 

312.  Government  fees. 


170  FOREIGN  PATENT  LAWS. . 

303.  LAW,  DATE,  AND  WHERE  RECORDED. — The  patent 
law  amendment  act,  1857.    (See  Commissioners  of  Patents' 
Journal,  vide  supra  71,  No.  660.) 

304.  KINDS  OF  PATENTS. — Patents  for  invention  or  im- 
provement and  addition  granted  by  the  Governor  to  the 
true  inventor  or  his  attorney;    disclaimer;   patent  for 
amended  specification;    caveats   against  disclaimers  or 
alterations,  entered  at  the  Office  of  the  Island  Secretary. 

305.  PREVIOUS  EXAMINATION. — By  the  Attorney  Gen- 
eral himself,  or  aided  by  other  persons. 

306.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
Declaration  in  writing  before  a  justice  of  the  peace.     Pe- 
tition to  the  Governor.     Written  description  or  specifica- 
tion, drawings,  and  models,  (if  possible,)  attested  by  two 
witnesses.     Deposit  of  £5  by  way  of  fee  to  the  Attorney 
General.     Notice  to  be  given  of  application,  with  descrip- 
tion in  general  terms,  in  the  Jamaica  Gazette  and  another 
newspaper,  for  at  least  four  weeks.     Letters  patent  to  be 
applied  for  within  three  months  after  filing  of  petition, 
and  in  case  of  death  of  applicant  within  three  months 
after  his  death. 

307.  WORKING. — Within  two  years. 

308.  DURATION. — Fourteen  years.     Foreign  invention 
according  to  the  term  of  the  original  patent. 

309.  ASSIGNMENTS. — Recorded  in   the   Office   of  the 
Island  Secretary  and  open  to  the  public.     Assignments 
of  foreign  patents  (for  a  good  consideration)  recorded  at 
the  same  place. 

310.  SPECIFICATIONS-,    INSPECTION   AND    COPIES    OF. — 
Lodged,  filed,  and  preserved  in  the  Office  of  the  Island, 
with  proper  indexes  thereto,  and  all  other  documents. 
Copies  (certified)  to  be  evidence  in  all  courts. 


MAURITIUS  AND  DEPENDENCIES.  171 

311.  PENALTY  FOE,  USE,  OR  FOR  IMITATION,  OR  COUNTER- 
FEIT WITHOUT  CONSENT. — Treble  damages,  and  for  using 
the  name  of  a  patentee  for  the  sale  of  an  unpatented  in- 
vention, £50;  one  half  to  Her  Majesty,  and  the  other  to 
any  person  who  shall 'sue  for  the  sum. 

312.  GOVERNMENT  FEES. — Letters  patent,  £5 ;  petition, 
Is.  Qd. ;  declaration,  Is.  Qd. ;  specification,  5s. ;  reference, 
certificate,  or  warrant  of  Attorney  General,  disclaimer  or 
memorandum  of  alteration,  Is.  Qd. ;  assignment,  105. 

XXVIII.  Mauritius  and  Dependencies. 


SEC. 

313.  Law,  date,  and  where  recorded. 

314.  Kinds  of  patents. 

315.  Government  fees. 

316.  Documents  required. 


SEC. 

317.  Specification,  &c.,  copies. 

318.  Duration. 

319.  Annulment. 

320.  Working. 


313.  LAW,  DATE,  AND  WHERE  RECORDED. — Ordinance, 
Ko.  11,  of  1835,  respecting  letters  patent.     (See   Com- 
missioners of  Patents'  Journal,  vide  supra  71,  No.  1,282, 
An.,  1866.) 

314.  KINDS  OF  PATENTS. — Letters  patent  granted  by 
the  Government  for  home  and  foreign  inventions  and 
improvements. 

315.  GOVERNMENT  FEES. — Duty  to  he  fixed  hy  Gov- 
ernment, but  not  to  exceed  £100. 

316.  DOCUMENTS  REQUIRED. — An  application,  with  an 
exact  description,  drawings,  and  plans. 

317.  SPECIFICATION,  INSPECTION  AND  COPIES   OF. — To 
be  published  after  the  expiration  of  or  annulment  of 
patent. 

318. — DURATION. — Term  not  to  exceed  fourteen  years. 


172 


FOREIGN  PATENT  LAWS. 


319.  ANNULMENT. — Patents  may  be  annulled  for  omis- 
sion or  unfaithful  description;  for  previous  discovery; 
for  non-exercise  of  privilege;    if  patent  should  be  ob- 
tained for  the  same  object  in  a  foreign  country;  if  inven- 
tion should  appear  to  be  dangerous. 

320.  WORKING. — Within  two  years  of  grant. 


XXIX.  Mexico. 


SEC. 

321.  Jurisdiction  of  patents. 

322.  Applications  to  Government  or 

local  authorities. 


SEC. 

323.  Prolongation  of  patents. 

324.  Fees. 

425.  Who  patentee  may  employ. 


321.  JURISDICTION  OF  PATENTS. — Patents  for  new  in- 
ventions and  improvements  are  granted  for  all  the  States 
of  the  Confederation.     Patents  for  inventions  shall  be 
in  vigor  for  ten  years,  and  those  for  improvements  for 
six  years.     Importers  of  any  branch  of  industry,  which 
the  General  Congress  might  think  of  great  importance, 
may  obtain  an  exclusive  privilege  by  making  an  applica- 
tion through  the  Government  to  the  Congress.     (§  1.) 

322.  APPLICATION  TO  GOVERNMENT  OR  LOCAL  AUTHORI- 
TIES.— Application  for  patents  may  be  made  'directly  to 
Government  or  else  to  the  local  authorities.     A  precise 
description  of  the  invention,  with  drawings,  models,  or 
whatever  may  be  considered  necessary  for  distinctly  ex- 
plaining the  invention,  is  to  be  signed  by  applicant  and 
delivered  to  the  authorities.     The  petition  is  to  be  pub- 
lished three  times  in  the  gazette,  to  enable  other  parties 
to  raise  claims  of  priority.     The  patent  may  then  be 
granted  at  the  risk  of  the  applicant  as  to  the  novelty  and 
utility  of  the  invention.     (§  2.) 


THE  NETHERLANDS.  178 

323.  PROLONGATION  OF  PATENTS. — Patents  may  be  pro- 
longed by  application  to  Congress  through  the  Govern- 
ment.    (§  3.) 

324.  FEES. — The  patent  fees  vary  between  $10  and 
$300,  (2  guineas  and  60  guineas.)     (§  4.) 

325.  WHO  MAY  BE  EMPLOYED  BY  PATENTEE. — Half  the 
number  of  men  employed  by  the  patentee  in  mechanical 
works  must  be  citizens  of  the  United  States  of  Mexico, 
if  such  may  be  had.     (§  5.) 


XXX.  The  Netherlands. 


SEC. 

326.  Law,  date,  and  where  recorded. 

327.  Kinds  of  patents. 

328.  Previous  examination. 

329.  Duration. 

330.  Government  fees. 

331.  Documents,  where  to  be  left. 


SEC. 

332.  Working  and  extension. 

333.  Assignments. 

334.  Annulment. 

335.  List  of  patents  delivered. 

336.  Specifications  published. 

337.  Proceedings  to  obtain  patent. 


326.  LAW,  DATE,  AND  WHERE  RECORDED. — Decree  of 
25th  January,  1817.     (See  Commissioners  of  Patents'  Jour- 
nal, vide  supra  71,  No.  289.) 

327.  KINDS  OF  PATENTS. — Patents   of  invention,  im- 
provement, or  importation  granted  to  natives  or  foreign- 
ers represented  in  the-  Netherlands.     No  guaranty  as  to 
priority  or  merit. 

328.  PREVIOUS  EXAMINATION. — By  the  Commissioner 
General  of  Instruction,  Arts,  and  Sciences,  and  some- 
times also  by  the  Royal  Institute  of  the  Netherlands. 

329.  DURATION. — Five,  ten,  and  fifteen  years.    Foreign 
inventions  according  to  the  duration  of  the  foreign  pat- 
ent. 

15* 


174  FOREIGN  PATENT  LAWS. 

330.  GOVERNMENT  PEES. — £12  10s.,  (150  fl.,)  for  five 
years;  from  £25  to  £33  105.,  (accordance  to  importance,) 
for  ten  years;  from  £50  to  £62  10s.,  for  fifteen  years. 
To  be  paid  to  the  Treasurer  of  the  Province,  at  the  de- 
livery of  the  patent  by  the  respective  Governors.     The 
remainder  of  taxes  on  patents  annulled  to  be  returned. 

331.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
A  petition  to  the  King.     A  specification  and  drawings. 
To  be  left  with  the  Registrar  of  the  States  for  the  Com- 
missioner General  of  Instruction,  Arts,  and  Sciences. 

332.  WORKING  AND  EXTENSION. — Original  term   pro- 
longed by  applying  to  the  Commissioner  General  of  In- 
struction, Arts,  and  Sciences.     To  be  worked  within  two 
years. 

333.  ASSIGNMENTS. — By  authorization   of  the  King. 
To  be  registered  at  the  Record  Office  of  the  Province, 
and  at  the  Ministry  of  Instruction,  Arts,  and  Sciences. 
Fees,  15s. 

334.  ANNULMENT. — In  case  of,  1st,  deficient  or  fraud- 
ulent  specification;    2d,  previous   publication;    3d,  not 
being  worked  within  two  years;  4th,  obtaining  a  foreign 
patent  at  a  posterior  date;  5th,  for  reasons  of  public 
safety. 

335.  LIST  OF  PATENTS  DELIVERED. — At  the  Ministry 
of  Public  Instruction,  in  the  official  gazette,  in  the  Com- 
missioners of  Patents'  Journal. 

336.  SPECIFICATIONS   PUBLISHED.— At  the   expiration 
or  annulment  of  patents,  except  there   be  political  or 
commercial  reasons  for  withholding  such  publication. 

337.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — Application 
must  be  by  petition,  stating  general  object  of  the  inven- 
tion, giving  applicant's  name,  domicil,  &c.,  naming  the 


NEWFOUNDLAND.  175 

term  for  which  the  patent  is  demanded,  with  an  exact 
and  detailed  specification,  under  sealed  cover,  annexed 
with  the  necessary  drawings,  &c.  These  shall  be  pub- 
lished at  the  expiration  of  the  patent,  unless  the  Govern- 
ment shall,  for  important  reasons,  postpone  such  publi- 
cation. 

The  Commissioner  General  shall  send  patents  of  in- 
vention, importation,  or  improvement,  granted  and  signed 
by  the  King,  to  the  Governor  of  the  Province  where  the 
applicant  resides,  the  patent  to  be  delivered  to  applicant 
on  his  proving  that  he  has  paid  to  the  receiver  of  the 
Province  the  tax  fixed  by  the  tariff". 

[NOTE. — The  Dutch  patent  laws  were  repealed  by  the 
law  of  the  15th  of  July,  1869,  enacting  the  abrogation 
of  grants  of  exclusive  rights  for  inventions  and  improve- 
ments of  objects  of  art  and  industry.  The  law  is  as  fol- 
lows : 

ART.  1.  From  and  after  the  day  of  the  promulgation 
of  the  present  law,  no  more  patents  for  inventions  and 
improvements,  or  importation  of  objects  of  art  and  in- 
dustry, will  be  granted,  except  such  as  may  have  been 
applied  for  previous  to  this  date.] 

(See  Commissioners  of  Patents'  Journal,  vide  supra  71, 
No.  1,643.) 

XXXI.  Newfoundland. 


SEC. 

338.  Law,  date,  and  where  recorded. 

339.  Documents  required,  and  where 

to  be  left. 

340.  Duration. 

341.  Kinds  of  patents. 


SEC. 

342.  Specifications,  copies  of. 

343.  Assignments. 

344.  Working. 

345.  Government  fees. 

346.  Other  legal  provisions. 


176  FOREIGN  PATENT  LAWS. 

338.  LAW,  DATE,  AND  WHERE  RECORDED. — An  act  to 
repeal  the  patent  acts  of  this  colony,  and  to  make  other 
provisions  in  lieu  thereof,  passed  12th  May,  1856.     (See 
Commissioners'  of  Patents'  Journal,  vide  supra  71,  No.  858, 
An.,  1862.) 

339.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
Petition  to  the  Governor,  with  description.     Declaration 
as  to  novelty  (in  foreign  parts  before  a  British  consul.) 
Drawings,  models,  (if  not  too  costly,)  or  specimens  of 
ingredients.     To  be  left  at  the  office  of  the  Colonial  Sec- 
retary.    Notice,  with  description,  in  the  royal  gazette 
and  one  local  paper. 

340.  DURATION. — Term  not  exceeding  fourteen  years. 
Extension  seven  years.     Foreign  patents  according  to 
original  term. 

341.  KINDS  OF  PATENTS. — Letters  patent  for  invention 
and  improvements  under  the  great  seal  of  the  Island. 
Disclaimer,  reissue  patents  granted  in  England  and  ex- 
tending to  the  colonies,  to  be  filed  or  lodged  (in  copies) 
in  the  office  of  the  Colonial  Secretary  for  obtaining  cer- 
tificate thereof. 

342.  SPECIFICATIONS,  COPIES  OF. — To  be  obtained  at 
the  office  of  the  Colonial  Secretary. 

343.  ASSIGNMENTS. — To  be  recorded  in  the  office  of 
the  Colonial  Secretary.     Real  assignees  of  foreign  in- 
ventors patented  abroad  may  obtain  letters  patent. 

344.  WORKING. — Within  two  years. 

345.  GOVERNMENT  FEES. — £5,  besides  the  usual  fees 
charged  on  documents  issued  under  the  great  seal  of  the 
Island. 

346.  OTHER  LEGAL  PROVISIONS. — Infringers  liable  to 
forfeit  and  pay  to  the  patentee  a  sum  equal  to  three 


NEW  SOUTH  WALES. 


177 


times  the  actual  damage  sustained  by  him,  together  with 
costs. 


XXXII.  New  South  Wales. 


SEC. 

347.  Law,  date,  and  where  recorded. 

348.  Kinds  of  patents. 

349.  Government  fees. 


SEC. 

350.  Duration. 

351.  Documents  required. 

352.  Proceedings  to  obtain  a  patent. 


347.  LAW,  DATE,  AND  WHERE  RECORDED. — Act  of  the 
Legislative  Council,  assented   to   6th  December,  1852. 
(See  Commissioners  of  Patents'  Journal,  vide  supra  71,  No. 
386,  An.,  1857.) 

348.  KINDS  OF  PATENTS. — Letters  of  registration  for 
invention  and  improvement  granted  to  inventors,  their 
agents  or  assignees.     Letters  of  registration  may  be  re- 
pealed by  writ  of  scire  facias. 

349.  GOVERNMENT  FEES. — £20,   payable   to   Colonial 
Treasurer. 

350.  DURATION. — Not  less  than  seven,  and  not  more 
than  fourteen  years. 

351.  DOCUMENTS  REQUIRED. — Petition  to  the  Govern- 
ment by  the  inventor,  agent,  or  assignees,  with  descrip- 
tion and  receipt  from  Colonial  Treasurer. 

352.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — The  appli- 
cant for  patents  is  to  present  a  petition  to  the  Governor, 
setting  forth  that  he  is  the  author  or  designer  of  a  cer- 
tain invention,  or  his  agent,  or  his  assignee,  stating  the 
particulars  of  the  invention,  and  that  he  has  deposited 
the  patent  fee  with  the  Colonial  Treasurer.     The  petition 
is  then  to  be  referred  to  one  or  more  competent  persons, 
and,  their  report  being  favorable,  the  letters  of  registra- 

12 


178 


FOREIGN  PATENT  LAWS. 


tion  may  be  granted,  the  same  to  be  registered  within 
three  days,  at  the  supreme  court,  on  pain  of  nullity. 


XXXIII.  New  Zealand. 


SEC. 

353.  Law,  date,  and  where  recorded. 

354.  Kinds  of  patents. 

355.  Duration. 

356.  Government  fees. 


SEC.  ' 

357.  Documents  required,  where  left. 

358.  Assignments. 

359.  Specifications,  inspection,  &c. 

360.  Other  legal  provisions. 


353.  LAW,  DATE,  AND  WHERE  RECORDED. — Patents  act, 
1860.     (See  Commissioners  of  Patents'  Journal,  vide  supra 
71,  Nos.  861,  1639,  An.,  1862.) 

354.  KINDS  OF  PATENTS. — Letters  patent;  letters  of 
registration  (for  foreign  patents) ;    disclaimer ;    memo- 
randa of  alteration ;  additional  patent;  royal  prerogative 
saved. 

355.  DURATION. — Fourteen  years.     Patents  of  inven- 
tion patented  abroad  according  to  the  term  of  the  for- 
eign patent. 

356.  GOVERNMENT  FEES. — £10  to  be  deposited  with  the 
Colonial  Treasurer  at  the  time  of  filing  petition.     Costs 
of  examiners,  if  called  in  by  the  Government  and  in  case 
of  objections  being  raised,  extra.     Amended  specifica- 
tion, 105.    Additions  to  former  inventions,  £10.    Letters 
of  registration  for  English  or  foreign  patents,  £10. 

357.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
A  petition  to  the  Governor.     Specification  in  duplicate 
and  drawings,  or  specimens  of  the  ingredients  or  of  the 
composition  of  matter,  (for  experiment.)     Notice  to  be 
inserted  in  the  Government  gazette  and  in  one  local 


PORTUGAL.  179 

paper.     Objections  to  be  raised  within  four  months  of 
said  notice. 

358.  ASSIGNMENTS. — Assignments  and  licenses  to  be 
recorded  within  six  months  from  the  execution  thereof, 
in  the  office  of  the  Colonial  Secretary.     Fees  10s.     More 
than  twelve  persons  may  have  a  legal  and  beneficial  in- 
terest in  letters  patent. 

359.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF. — At 
the  office  of  the  Colonial  Secretary.     Certified  copies 
received  in  evidence  in  all  courts. 

360.  OTHER  LEGAL  PROVISIONS. — Letters  patent  may 
be  repealed  by  writ  of  wire  facias.     Penalty  for  counter- 
feiting, £50.     If  in  any  action  or  suit  a  verdict  or  decree 
shall  pass  for  the  patentee,  the  judge  may  grant  a  cer- 
tificate, which  shall  entitle  the  patentee,  upon  a  verdict 
in  his  favor,  to  receive  treble  costs.     Plaintiff  in  any  ac- 
tion shall  file  with  declaration  notice  of  objections  on 
which  he  means  to  rely  at  trial.     Judge  at  chambers  on 
summons  may  allow  other  objections  at  his  discretion. 


XXXIV.  Portugal. 


SEC. 

361.  Law,  date,  and  where  recorded. 

362.  Kinds  of  patents. 

363.  Previous  examination. 

364.  Duration. 

365.  Government  fees. 

366.  Documents,  where  to  be  left. 


SEC. 

367.  Working  and  prolongation. 

368.  Assignments. 

369.  Annulment. 

370.  Other  provisions. 

371.  Specifications,  inspection  and 

copies  of,  (models.) 


361.  LAW,  DATE,  AND  WHERE  RECORDED. — Royal  decree 
of  31st  December,  1852.  (See  Commissioners  of  Patents' 
Journal,  vide  supra  71,  No.  1026.  An.,  1863.) 


180  FOREIGN  PATENT  LAWS. 

362.  KINDS  OF  PATENTS.— Patents  of  invention,  im- 
provement, and  importation  granted  to  natives  and  for- 
eigners.    Food,  drugs,  theoretical  principles,  and  orna- 
mentation excluded.     Government  may  buy  up  patent 
rights  by  private  contract.     Patents  subject  to  expropri- 
ation for   public   utility.      Original   inventors  to  have 
a  prior   right  to  patents   of   importation   during   one 
year. 

363.  PREVIOUS    EXAMINATION. — No    guaranty   as    to 
truth,  priority,  or  merit.     No  opposition  or  forfeiture  at 
the  expiration  of  the  first  half  of  the  term  for  which  the 
patent  was  granted. 

364.  DURATION. — Fifteen  years  at  most  for  patents  of 
invention,  five  years  at  most  for  patents  of  importation; 
the  latter  granted  by  open  competition.     Term  of  patent 
to  reckon  from  date  of  patent,  priorit}7  from  date  of  de- 
posit. 

365.  GOVERNMENT  FEES. — Five  thousand  reis  per  an- 
num.    To  be  applied  to  industrial  improvements. 

366.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
Deposit  at  the  respective  Civil  Governor  of  a  description, 
(in  Portuguese,)  drawings  on  a  metrical  scale  and  in  ink, 
models,  and  duplicate  of  the  same,  (all  sealed;)  the  latter 
to  be  returned  to  the  patentee.     A  petition  to  the  Secre- 
tary of  State  for  Commerce,  or  a  certificate  stating  that 
no  other  similar  patent  has  been  recorded.     A  receipt  for 
the  Government  fees. 

367.  WORKING  AND  PROLONGATION. — Within  one  year. 
Prolongation  of  five  years  far  patents  of  invention  only. 

368.  ASSIGNMENTS. — At  the  Ministry  of  Commerce. 

369.  ANNULMENT. — For  reasons  of  public  safety  and  for 
being  contrary  to  law;  for  defective  or  false  description  ; 


PRUSSIA. 


181 


for  want  of  novelty;  for  not  being  worked  within  the 
prescribed  time. 

370.  OTHER  PROVISIONS. — Revivals  of  industrial  pro- 
cesses lost  sight  of  to  be  considered  as  discoveries.     New 
means  of  producing  known  articles  held  to  be  an  inven- 
tion.    Inventions  known  abroad  or  in  Portugal  not  pat- 
entable  in  Portugal,  but  when  not  worked  in  Portugal  at 
the  time  of  application  they  may  be  protected  by  a  pat- 
ent of  importation. 

371.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF,  (MOD- 
ELS.)— At  the  Ministry  of  Commerce.    At  the  Museum 
of  Industry. 


XXXV.  Prussia. 


SEC. 


372.  Law,  date,  and  where  recorded. 

373.  Kinds  of  patents. 

374.  Previous  examination. 

375.  Duration. 

376.  Government  fees. 

377.  Documents  required,  and  where 

to  be  left. 

378.  Working. 


SEC. 

379.  Assignments. 

380.  Other  legal  provisions. 

381.  Specifications,  inspection  and 

copies  of. 

382.  List  of  patents  delivered. 

383.  Specifications  published. 

384.  Proceedings  to  obtain  a  pat- 

ent. 


372.  LAW,  DATE,  AND  WHERE  RECORDED. — Royal  ordi- 
nance of  14th  October,  1815  and  18th  September,  1828. 
Convention  between  the  States  of  the  Zollverein  of  29th 
June,  1843.     (See  Commissioners  of  Patents'  Journal,  vide 
supra  71,  Nos.  313,  329,  and  231.) 

373.  KINDS  OF  PATENTS. — Patents   of  invention,  im- 
provement, and  importation  delivered  by  the  Minister 
of  Commerce  and  Public  Works  to  Prussians  and  for- 
eigners naturalized  or  represented  by  Prussians. 

16 


182  FOREIGN  PATENT  LAWS. 

374.  PREVIOUS  EXAMINATION. — By  the  Royal  Polytech- 
nic Commission  as  to  the  novelty  and  peculiar  character 
of  the  invention,  without  any  consideration  as  to  its  util- 
ity and  appropriateness,  except  in  cases  of  patents  for  a 
real  improvement  of  existing  apparatus  or  methods.     The 
Minister  of  Commerce  may  order  a  new  examination  to 
take  place.     No  guaranty  by  Government.     Parts  of  in- 
ventions already  known  not  protected  by  patent.     Pat- 
ents are  annulled  whenever  the  supposition  of  the  inven- 
tion being  new  and  peculiar  is  shown  to  be  unfounded. 

375.  DURATION. — Six  months  at  least  and  fifteen  years 
at  most. 

376.  GOVERNMENT  FEES. — A  stamp  duty  of  Is.  6d.  (15 
sgr.)  besides  the  legal  trade  tax. 

377.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
An  application  to  the  respective  Provincial  Administra- 
tion ;  a  description,  drawings,  or  models.     Statement  as 
to  whether  the  patent  is  to  be  granted  for  the  entire  mon- 
archy or  not. 

378.  WORKING. — Before  the  expiration  of  six  months, 
at  the  latest,  from  the  day  of  the  delivery  of  the  patent. 

379.  ASSIGNMENTS. — To  Prussian  citizens. 

380.  OTHER  LEGAL  PROVISIONS. — Cases  of  infringement 
to  be  settled  by  the  Provincial  Administration  of  the 
place  where  the  infringer  resides,  with  option  of  appeal 
to  the  Minister  of  Commerce.     Infringers  to  pay  the 
costs  of  inquiry  only,  but  not  subject  to  confiscation  of 
tools,  &c.,  or  damages,  except  in  case  of  a  second  offense. 

3&1.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF. — At 
the  Ministry  of  Commerce  and  Public  "Works. 

382.  LIST  OF  PATENTS  DELIVERED. — A  summary  notice 
in  the  Prussian  Gazette,  and  in  the  official  provincial  pa- 


RUSSIA.  183 

pers,  within  six  weeks  after  the  delivery  of  the  patent. 
(Titles  in  the  Commissioners  of  Patents'  Journal.] 

383.  SPECIFICATIONS  PUBLISHED. — In  the   Verhandlun- 
gen  des  Gcwcrbe-Vereins  and  other  technical  periodicals. 
Kept  at  the  Public  Free  Library  of  the  Patent  Office. 

384.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — Applications 
must  be  accompanied  by  a  precise  description  and  illus- 
tration by  models,  drawings,  or  writings,  and,  if  possi- 
ble, by  all  these  three  means.     Applicants  must  state  if 
the  patent  is  required  for  the  whole  or  only  part  of  the 
kingdom,  and  for  how  long  a  period.     Experts  are  to  ex- 
amine the  applications,  and  report  thereon  to  the  Minister 
of  Commerce  and  Public  "Works  as  to  the  object,  the  ex- 
tent, and  duration  of  the  patent.     This  minister  is  to 
execute  and  deliver  the  patent,  and  to  control  the  custody 
of  models,  drawings,  and  specifications.     The  shortest 
term  for  a  patent  is  six  months,  the  longest  fifteen  years. 

XXXVI.  Queensland. 

385.  (See  Commissioners  of  Patents'  Journal,  No.  859.) 
No  patent  laws  have  been  enacted  in  the  Colony  of 
Queensland  since  its  separation  from  New  South  Wales, 
but  the  colonial  act,  (New  Soutli  Wales,)  16  Viet.,  No. 
XXIV.,  (see  No.  386  of  the  Commissioners  of  Patents' 
Journal,}  was  continued  in  force  in  the  Colony  by  an 
order  in  Council  of  the  6th  November,  1859. 

XXXVIII.  Russia. 


SEC. 

386.  Law,  date,  and  where  recorded. 

387.  Kinds  of  patents. 

388.  Previous  examination. 


SEC. 

389.  Duration. 

390.  Government  fees. 

391.  Documents,  where  to  be  left. 


184 


FOREIGN  PATENT  LAWS. 


SEC. 

392.  Working  and  prolongation. 

393.  Assignments. 

394.  Specification,  inspection,  copies. 


SEC. 

395.  Lists  of  patents  delivered. 

396.  Specifications  published. 

397.  Proceedings  to  obtain  patent. 


386.  L  A  w,"D  ATE,  AND  WHERE  RECORDED. — Statutes  of  the 
Russian  Empire,  vol.  iv.,  book  1,  part  3,  chap.  3.     (See 
Commissioners  of  Patents'  Journal,  vide  supra  71,  No.  334.) 

387.  KINDS  OF  PATENTS. — Exclusive  privileges  and  pat- 
ents of  invention,  improvement,  and  importation  granted 
to  natives  and  aliens. 

388.  PREVIOUS  EXAMINATION. — By  the  Board  of  Man- 
ufactures, as  to  novelty,  legal  or  technical  forms,  and 
public  utility.     No  guaranty  by  the  Government.     Rea- 
sons for  refusal  published  in  the  Moscow  and  St.  Peters- 
burg newspapers. 

389.  DURATION. — Three,  five,  and  ten  years  at  most 
from  the  day  on  which  the  patent  has  been  signed.     Six 
years  at  most  for  patents  of  importation. 

390.  GOVERNMENT  FEES. — Patents  of  invention  :  90  sil- 
ver roubles  for  three  years ;  150  s.  r.  for  five  years ;  450  s.  r. 
for  ten  years.    Patents  of  importation :  60  s.  r.  for  one  year; 
120  s.  r.  for  two  years;  180  s.  r.  for  three  years ;  240  s.  r.  for 
four  years;  300  s.  r.  for  five  years;  360  s.  r.  for  six  years. 
(1  s.  r.=3.9.  8d.)     The  surplus  accruing  from  patent  fees 
to  be  applied  to  the  purchase  of  books,  models,  &c. 

391.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
A  petition  to  the  Board  of  Commerce  and  Trades ;  a  de- 
scription, (in  Russian,)  and,  in  case  of  a  patent  of  import- 
ation, (also  in  the  original  language,)  drawings  and  mod- 
els.    Payment  of  the  fees.     Defective  specifications  may 
be  amended. 

392.  WORKING  AND  PROLONGATION. — No  prolongation. 


RUSSIA.  185 

To  be  worked  within  the  first  quarter  of  the  term  speci- 
fied. A  certificate  from  the  local  administration  to  he 
sent  to  the  respective  ministry  within  six  months  of  the 
working.  No  company  to  work  patents  without  special 
grant  of  the  Government. 

393.  ASSIGNMENTS. — To  be  reported  to  the  respective 
department  to  which  the  patent  belongs  and  published, 

394.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF. — At 
the  respective  ministry. 

395.  LISTS  OF  PATENTS  DELIVERED. — In  the  Moecow 
and  St.  Petersburg  papers. 

396.  SPECIFICATIONS  PUBLISHED. — In  the  journal  of  the 
respective  ministry,  in  the  reports  of  the  Senate,  and  the 
Moscow  and  St.  Petersburg  papers. 

397.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — Applicants 
may  apply  personally,  or  through  an  agent  authorized  by 
power  of  attorney.     Such  agent  is  to  undertake  to  pay 
the  tax  in  case  the  privilege  be  granted. 

Petitions  for  patents  are  examined  by  the  Board  of  In- 
dustry, to  ascertain  whether  a  previous  patent  had  not 
been  granted  for  the  same  object;  whether  the  descrip- 
tion be  full,  clear,  and  exact;  whether  any  public  benefit 
be  derivable  from  the  invention  ;  whether  it  contain  any- 
thing injurious  to  human  health  and  safety. 

The  invention  being  found  free  from  these  objections, 
the  patent  may  be  issued. 

When  two  parties  apply  for  a  patent  for  the  same  in- 
vention, neither  can  obtain  it  without  establishing  by 
decree  of  a  court  of  law  his  prior  right. 

"When  patents  are  refused  the  tax  is  refunded. 
16* 


186 


FOREIGN  PATENT  LAWS. 


XXXVIII.  Saxony. 


SEC. 

398.  Law,  date>  and  where  recorded. 

399.  Kinds  of  patents. 

400.  Previous  examination. 

401.  Duration. 

402.  Government  fees,  stamps,  &c. 

403.  Documents,  where  to  be  left. 


SEC. 

404.  Working  and  extension. 

405.  Assignments. 

406.  Annulment. 

407.  Lists  of  patents  delivered. 

408.  Specifications. 

409.  Proceedings  to  obtain  a  patent. 


398.  LAW,  DATE,  AND  WHERE  KECORDED. — Royal  decree 
of  20th.  January,  1853.     (See  Commissioners  of  Patents' 
Journal,  vide  supra  71,  No.  236. 

399.  KINDS  OF  PATENTS. — Patents  for  new  or  unpub- 
lished (abroad  or  in  Germany)  inventions  and  improve- 
ments granted  to  natives,  naturalized  citizens  of  the 
German  States,  or  foreigners  residing  or  represented  in 
Saxony.     Drugs,  food,  and  scientific  principles  excluded. 
Patent  articles,  other  than  machines  or  manufacturing 
tools,  may  be  imported,  used,  and  sold  by  third  parties. 

400.  PREVIOUS    EXAMINATION.  —  Technical    examina- 
tion. 

401.  DURATION. — Five  years;  extended  to  ten  years  by 
applying  four  weeks  at  the  latest  before  the  expiration  of 
the  original  term. 

402.  GOVERNMENT  FEES,  STAMPS,  AND  TAXES. — £3  105. 
for  five  years.     £7  10s.  on  applying  for  extension  to  ten 
years.     £1  4s.  for  technical  examination  on  applying  for 
patent.     12s.  on  apply  ing  for  extension  of  time  for  work- 
ing, besides  the  usual  stamp  duty  (on  papers.) 

403.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
An  application  to  the  Minister  of  the  Interior ;  a  speci- 


SAXONY.  187 

fication  and  drawings  or  models,  (all  papers  stamped;) 
the  cost  of  technical  examination. 

404.  WORKING  AND  EXTENSION. — Within  one  year  from 
the  date  of  grant;  subject  to  trade  regulations.     Term 
extended,  on  showing  good  cause  for  delay,  by  applying 
to  the  Minister  of  the  Interior  four  weeks  at  the  latest 
before  the  expiration  of  the  year. 

405.  ASSIGNMENTS. — To  natives  or  naturalized  citizens 
of  Saxony  or  other  German  States. 

406.  ANNULMENT. — By  the  Minister  of  the  Interior. 
For  want  of  novelty,  (partly  or  entirely;)  false  statement 
as  to  nationality,  or  being  the  original  inventor  or  his 
assignee;  defective  specification;  for  not  being  worked 
in  due  time. 

407.  LISTS  or  PATENTS  DELIVERED. — In  the  Leipzig 
Gazette  and  in  the  Commissioners  of  Patents'  Journal. 

408.  SPECIFICATIONS. — Published  in  the  Polytechnische 
Centralblatt  and  other  technical  periodicals.     Originals 
kept  at  the  Ministry  of  the  Interior. 

409.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — Applications 
for  the  grant  or  extension  of  a  patent  must  be  made  in 
writing,  addressed  to  the  Minister  of  the  Interior,  accom- 
panied by  a  specification  and  drawings  or  models  so  dis- 
tinct that  any  skilled  person  may  work  the  invention  by 
such  instruction.     The  novel  points  must  be  clearly  indi- 
cated.    The  tax  No.  1  is  to  be  paid  at  the  same  time. 
The  applicant  will  then  learn  whether  the  application 
can  be  granted  and  when  he  is  to  pay  the  tax  No.  2.     The 
payment  is  immediately  followed  by  the  announcement 
of  the  grant  of  the  patent. 


188  FOREIGN  PATENT  LAWS. 


XXXIX.  Spain. 


SEC. 

410.  Law,  date,  and  where  recorded. 

411.  Kinds  of  patents. 

412.  Previous  examination. 

413.  Duration. 

414.  Government  fees. 

415.  Documents,  where  to  be  left. 

416.  Working  and  extension. 

417.  Infringements. 


SEC. 

418.  Assignments. 

419.  Specifications,   inspection   and 

copies  of. 
120.  List  of  patents  delivered. 

421 .  Originals  of  specifications  (mod- 

els.) 

422.  Proceedings  to  obtain  a  patent. 

423.  Form  of  petition  to  the  king. 


410.  LAW,  DATE,  AND  WHERE  RECORDED. — Royal  decree 
of  27th  March,  1826,  14th  June,  1829,  23d  December, 
1829.     (See  Commissioners  of  Patents'  Journal,  vide  supra 
71,  No.  323.) 

411.  KINDS  OF  PATENTS. — Patents  for  inventions  and 
importations  to  natives  and  foreigners. 

412.  PREVIOUS  EXAMINATION. — None  as  to  novelty  or 
utility. 

413.  DURATION. — Five,  ten,  or  fifteen  years  for  patents 
of  invention;  five  years  for  patents  of  importation,  pro- 
longed to  ten  years.     To  begin  from  the  date  of  the 
patent. 

414.  GOVERNMENT  FEES. — 1,000  reis  for  fiveyears;  3,000 
reis  for  ten  years ;  6,000  reis  for  fifteen  years ;  3,000  reis 
for  patents  of  importation  for  five  years,  besides  80  reis  on 
the  delivery  of  the  patent  in  addition  to  the  above  sums. 
(1  real =5d.) 

415.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
An  application  of  inventor  or  his  attorney  to  the  Queen; 
a  description  and  plan  of  model,  (sealed,)  with  an  annex- 
ed memorandum  pointing  out  the  chief  claims  of  the 
inventor. 


SPAIN.  189 

416.  WORKING  AND  EXTENSION. — To  be  worked  within 
and  not  to  be  interrupted  for  one  year  and  one  day. 

417.  INFRINGEMENTS. — Punishable  by  confiscation  of 
machines,  utensils,  apparatus,  and  manufactured  goods, 
and  by  a  fine  of  three  times  their  value,  for  the  benefit 
of  the  patentee. 

418.  ASSIGNMENTS. — Registered  at  the  Royal  Conserv- 
atory of  Arts  within  thirty  days  of  date. 

419.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF. — Open 
to  the  public  at  the  Royal  Conservatory  at  the  expiration 
of  the  patent. 

420.  LIST  OF  PATENTS  DELIVERED. — In  the  Madrid  Ga- 
zette; in  a  public  register  at  the  Conservator^  of  Arts. 

421.  ORIGINALS  OF  SPECIFICATIONS,  (MODELS.) — At  the 
Royal  Conservatory  of  Arts. 

422.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — Patents  must 
be  solicited  by  the  applicant  or  his  agent  by  means  of  a 
memorial  (in  Spanish)  in  the  following  form : 

To  the  Governor  of  the  Province  of 

N.  domiciled  [or  residing]  at  ,  [state  prof ession],  begs  respect- 

fully to  state,  that  for  the  purpose  of  securing  the  property  of  a  machine 
[instrument,  apparatus,  process,  method]  invented  [imported]  by  him  for 
[state  object],  and  conformably  to  the  royal  regulations,  he  presents  to  you 
the  required  memorial  for  his  Majesty,  and  a  closed  and  sealed  packet,  [or 
case,]  and  the  following  inscription  [copy  of  inscription.] 

I  request  you  to  sign  the  said  packet  [or  case],  to  deliver  the  proper  cer- 
tificate to  me,  and  to  let  me  have  the  required  official  letter  to  his  excel- 
lency the  Secretary  of  State  and  of  the  Exchequer,  that  I  may  deliver  the 
whole  into  his  hands,  according  to  the  regulations. 

[Address  and  date.] 

[Signature.] 

This  memorial  is  to  be  accompanied  by  a  petition  to 
the  King,  on  stamped  paper,  mentioning  the  object  of 
the  patent,  whether  original  or  imported,  and  its  dura- 


190  FOREIGN  PATENT  LAWS. 

tion.  Each  application  must  not  contain  more  than  one 
object. 

423.  FORM  OF  PETITION  TO  THE  KING. — 

N.  domiciled  [or  residing]  at  ,  [state  profession],  submits  to 

your  Majesty,  with  profound  respect,  £hat  for  the  purpose  of  securing  the 
property  of  a  machine  [instrument,  apparatus,  process,  method]  invented 
[imported]  by  him  [state  object],  and  conformably  to  the  regulations  made 
by  your  Majesty,  he  solicits  from  your  Majesty  the  delivery  of  letters  pat- 
ent for  years  ;  and  he  will  ever  pray,  &c. 

[Signature.] 

There  must  likewise  be  sent  with  the  memorial  and 
petition  a  plan  or  model,  with  the  description  and  ex- 
planation q£  the  mechanism  or  process,  clearly  and  cor- 
rectly, so  that  no  doubt  may  ever  arise  of  its  object  or 
particular  nature,  with  a  declaration  that  the  invention 
has  never  been  worked  in  that  form  before.  Models 
must  be  in  a  sealed  case  and  plans  and  descriptions  in 
a  sealed  cover,  both  bearing  the  following  inscription : 

Application  for  letters  patent  presented  by  N.  domiciled  at  , 

to  the  Governor  of  ,  for  [insert  title  of  invention,  as  mentioned  in  the 

petition  to  his  Majesty,  month,  year,  day,  and  hour.] 

[Signature  of  Governor.] 
[Name  of  the  Applicant.] 
[Number  of  Register.  ] 

The  petition,  having  been  examined  by  the  General 
Commission  of  Commerce,  Money,  and  Mines,  and  ap- 
proved, is  granted,  and  letters  patent  are  delivered  on 
the  production  of  a  receipt  showing  that  taxes  have  been 
paid  to  the  Royal  Conservatory  of  Arts. 

After  delivery  of  the  patent  the  closed  and  sealed  doc- 
uments shall  be  deposited  in  a  room  of  the  Royal  Con- 
servatory of  Arts,  and  shall  only  be  opened  in  case  of 
litigation,  and  by  order  of  the  judge.  Grants  of  patent 


SWEDEN. 


191 


are  to  be  published  in  the  Royal  Gazette.     A  register  of 
patents  is  to  be  kept  open  to  public  inspection. 

A  note  is  to  be  annexed  to  the  description  and  explan- 
ation which  accompany  the  petition  for  a  patent,  point- 
ing out  clearly,  distinctly,  and  solely  that  part,  mechan- 
ism, substance,  or  process  which  is  the  object  of  the 
patent  and  which  the  applicant  desires  to  secure,  and  the 
letters  patent  shall  apply  only  to  the  contents  of  the  said 
note.  This  note  is  to  be  verified  by  the  Council  of  the 
Exchequer. 


XL.  Sweden. 


SEC. 

424.  Law,  date,  and  where  recorded. 

425.  Kinds  of  patents. 

426.  Previous  examination. 

427.  Duration. 

428.  Government  fees. 

429.  Documents  required  and  where 

to  be  left. 

430.  Working  and  extension. 


SEC. 

431.  Assignments. 

432.  Other  legal  provisions. 

433.  Specifications,  inspection,  and 

copies  of. 

434.  List  of  patents  delivered. 

435.  Specifications  published. 

436.  Originals  of  specifications,(mod- 

els.) 


424.  LAW,  DATE.  AND  WHERE  RECORDED. — Royal  ordi- 
nance, dated  19th  August,  1856,  in  force  since  October 
1,  1856.    (See  Commissioners  of  Patents'  Journal,  vide  supra 
71,  No.  354,  and  for  Norway,  No.  655.) 

425.  KINDS  OF  PATENTS. — Patents  of  invention  and 
improvement    granted   to   the  original    inventor   only, 
whether  a  native  or  alien,  residing  or  represented  in  the 
country.     No  patents  are  granted  for   pharmaceutical 
preparations,  or  for  invention  contrary  to  existing  laws, 
to  public  safety,  or  morality. 

426.  PREVIOUS  EXAMINATION. — By  the   Chamber  of 


192  FOREIGN  PATENT  LAWS. 

Commerce,  as  to  the  invention  being  contrary  to  exist- 
ing laws,  to  public  safety,  or  morality.  Official  publica- 
tions of  foreign  inventions  do  not  prevent  grants  of 
patents.  No  guaranty  as  to  novelty  or  utility. 

427.  DURATION. — Three  years  at  least,  and  fifteen  years 
at  most,  according  to  the  nature  and  importance  of  the' 
invention.     Patents  for  foreign  inventions  not  to  exceed 
the  term  granted  abroad. 

428.  GOVERNMENT  FEES. — None  except  the  costs  of 
publishing  the  specification  in  the  "Post  $  Inrikes  Tid- 
ningar." 

429.  DOCUMENTS  REQUIRED  AND  WHERE  TO  BE  LEFT. — A 
petition  to  the  Chamber  of  Commerce,  (Kommers-Kolle- 
gium;}  a  declaration  as  to  whether  the  invention  be  new 
or  an  improvement;  a  full  description  of  the  means  of 
working  the  invention,  drawings  or  models,  (if  required.) 
N".  B.  A  month's  time  is  allowed,  if  applied  for,  for  de- 
livering the  complete  specification. 

430.  WORKING  AND  EXTENSION. — To  be  worked  within 
one,  two,  or  four  years  of  the  date  of  patent,  according 
to  the  nature  and  importance  of  the  invention,  such 
working  not  to  be  interrupted  for  one  year. 

431.  ASSIGNMENTS. — To  parties  residing  in  the  king- 
dom, by  permission  of  the  Chamber  of  Commerce. 

432.  OTHER  LEGAL  PROVISIONS. — Infringements  pun- 
ishable by  a  fine  of  from  100  to  200  rix-dollars  (£23  to 
£46)  for  the  first  offense,  and  from  200  to  400  rix-dollars 
(£46  to  £92)  for  the  second  offense;  besides  by  damages, 
half  of  which  belong  to  the  patentee,  and  the  other  going 
towards  the  relief  of  the  poor  of  the  parish. 

433.  SPECIFICATIONS,  INSPECTION,  AND  COPIES  OF. — In 
the  records  of  the  Chamber  of  Commerce. 


TASMANIA. 


193 


434.  LIST  OF  PATENTS  DELIVERED. — Placarded  in  the 
Hall  of  the  Chamber  of  Commerce,  and  published  in  the 
"Post  $  Inrikes  Tidningar" 

435.  SPECIFICATIONS  PUBLISHED. — Three  times  within 
two  months  of  the  grant,  in  the  "Post  $•  Inrikes  Tid- 
ningar" 

436.  ORIGINALS  OF  SPECIFICATIONS,  (MODELS.) — In  the 
records  of  the  Chamber  of  Commerce,  Stockholm. 


XL  I.  Tasmania. 


SEC. 

437.  Law,  date,  and  where  recorded. 

438.  Kinds  of  patents. 

439.  Duration. 

440.  Government  fees. 


SEC. 

441.  Documents  required,  Ac. 

442.  Assignments. 

443.  Originals  of  specifications,  &c. 

444.  Other  legal  provisions. 


437.  LAW,  DATE,  AND  WHERE  RECORDED. — Act  22  Viet., 
dated  5th  November,  1858.     (See  Commissioners  of  Pat- 
ents' Journal,  vide  supra  71,  No.  860,  An.,  1862.) 

438.  KINDS  OF  PATENTS. — Lettej-s  patent  and  grants  of 
privilege  to  the  true  and  first  inventor,  under  the  seal 
of  the  colony;  disclaimer  and  alteration;   English  pat- 
ent granted  before  the  30th  June,  1859,  to  be  valid  in 
the  colony. 

439.  DURATION. — Fourteen  years.     Patents  to  expire 
at  the  end  of  the  third  or  seventh  year,  if  the  required 
grant-fees  are  not  paid.     Letters  patent  for  foreign  in- 
vention not  to  continue  after  expiration  of  foreign  patent. 
Extension  for  a  term  not  exceeding  fourteen  years  after 
the  expiration  of  the  first  term. 

440.  GOVERNMENT  FEES. — On  depositing  specification, 

£2  10s. ;  to  the  law  oflicer  for  any  appointment,  £2  45. 
17 


194  FOREIGN  PATENT  LAWS. 

6d. ;  on  obtaining  letters  patent,  £2  10s. ;  at  or  before  the 
expiration  of  third  year,  £15;  at  or  before  the  expiration 
of  seventh  year,  £20;  to  the  law  officer  with  particulars 
of  objection,  £2  4s.  Qd.;  on  presenting  petition  for  exten- 
sion or  confirmation,  £2  10s. ;  every  search  and  inspec- 
tion, Is.;  entry  of  assignment  or  license,  10s. ;  certificate 
of  assignment  or  license,  10s. ;  filing  disclaimer  or  mem- 
orandum of  alteration,  £2  10s.;  entering  any  caveat, 
£2  10s.;  copy  or  extract  of  any  writing,  per  common 
law  folio,  Is. 

441.  DOCUMENTS  REQUIRED  AND  WHERE  TO  BE  LEFT. — 
Petition  to  the  Government;  declaration  of  being  the 
first  inventor,  with  annexed  specification  (and  copy)  of  a 
certain  size,  and  drawings,  if  any,  for  provisional  protec- 
tion of  six  months.     Notice  to  proceed  to  be  published 
in  the  Government  gazette  and  two  local  papers.     "War- 
rant for  letters  patent  issued  by  Attorney  General  after 
one  month's  notice.     Letters  patent  bearing  date  of  de- 
posit of  specification  to  be  issued  within  three  months 
after  said  warrant,  and  during  the  protection. 

442.  ASSIGNMENTS. — Registered  as  above,  and  legal 
copies  thereof  to  be  had. 

443.  ORIGINALS  OF  SPECIFICATIONS,  DISCLAIMERS,  DRAW- 
INGS, &c. — To  be  filed  at  the  end  of  six  months,  at  a 
proper  office,  with  indexes,  registers,  &c.,  for  public  in- 
spection. 

444.  OTHER  LEGAL  PROVISIONS. — Letters  patent  may 
be  repealed  or  withheld,  and  specifications  canceled  by 
writ  of  the  supreme  courts,  in  the  nature  of  a  writ  of 
scire  facias  in  England.     Letters  patent  not  to  prevent 
the  use  of  invention  in  foreign  ships  resorting  to  ports 
in  the  colony,  (provided  there  be  reciprocity  in  this 


VICTORIA.  195 

behalf.)    Penalty  for  unauthorized  use  of  word  patent, 
£100. 

»  XLII.  Trinidad. 


SEC. 

•  445.  Law,  date,  and  where  recorded. 

446.  Duration. 

447.  Government  fees. 


SEC. 

448.  Kinds  of  patents. 

449.  Documents  required,  &c. 

450.  Specifications. 


445.  LAW,  DATE,  AND  WHERE  RECORDED. — Separate  or- 
dinance. (See  Commissioners  of  Patents'  Journal,  vide  supra 
71,  No.  883,  An.,  1862.) 

446.  DURATION. — Fourteen  years. 

44tf.  GOVERNMENT  FEES. — On  presentation  of  bill,  $50; 
government  printer's  charge,  $10=$60,  (£12  105.) 

448.  KINDS  OF  PATENTS. — Bill  for  granting  for  a  lim- 
ited time  the  exclusive  benefit  of  a  certain  invention. 

449.  DOCUMENTS  REQUIRED  AND  WHERE  TO  BE  LEFT. — 
Petition  to  the  Government.     Specifications  to  be  deliv- 
ered within  six  months  after  the  passing  of  ordinance  to 
the  Registrar  General. 

450.  SPECIFICATIONS. — Recorded  in  the  office  of  the 
Registrar  General. 

XLIII.  Victoria,  (Australia.) 


SEC. 

451.  Law,  date,  and  where  recorded. 

452.  Kinds  of  patents. 

453.  Previous  examination. 

454.  Duration. 

455    Government  fees. 

456.  Documents,  where  to  be  left. 


SEC. 

457.  Assignments. 

458.  Specifications  and  indexes. 

459.  Lists  of  patents  delivered. 

460.  Penalties  and  fines. 

461.  Proceedings  to  obtain  a  patent. 

462.  Form  of  application. 


451.  LAW,  DATE,  AND  WHERE  RECORDED. — Act  of  the 


196  FOREIGN  PATENT  LAWS. 

Lieutenant  Governor  of  the  Colony  of  Victoria,  Anno 
Decimo  Septimo  Victories  Reginse.  Assented  to  31st 
March,  1854.  Repealed  llth  March,  1857,  and  super- 
seded by  act  Anno  Vicesimo  Victories  Reginee.  Dated 
llth  March,  1857.  (See  Commissioners  of  Patents'  Jour- 
nal, vide  supra  71,  Nos.  186  and  359.) 

452.  KINDS  OF  PATENTS. — Letters  patent  for  inventions 
and  for  imported  inventions  granted  by  the  Queen  to  the 
true  and  first  inventor  of  manufactures.     Letters  patent 
granted  in  the  United  Kingdom  of  Great  Britain  and 
Ireland,  on  or  before  the  31st  December,  1857,  to  be  also 
valid  in  Victoria.     (N.  B.  Letters  patent  not  to  prevent 
the  use  of  inventions  in  foreign  ships  resorting  to^Dorts 
in  Victoria,  except  reciprocal  rights  be  denied  to  British 
ships  in  such  foreign  ports  as  they  belong  to.) 

453.  PREVIOUS   EXAMINATION. — By  the  Law  Officer, 
and,  if  required,  by  one  or  more  competent  person  or 
persons  appointed  by  him,  in  case  of  opposition  raised 
within  one  month  of  the  notice  to  proceed,  inserted  in 
the  Government  gazette  and  two  other  papers,  both  ap- 
plicant and  opponent  being  present. 

454.  DURATION. — Original  inventions  fourteen  years. 
Imported  inventions  according  to  the  duration  of  the 
foreign  patent,  or,  if  more  than  one,  according  to  the 
shortest  duration.     Letters  patent  may  be  repealed  by 
scire  facias.     Extension  of  term,  not  exceeding  fourteen 
years,  by  petition  to  Government  six  months  before  the 
expiration  of  the  patent. 

455.  GOVERNMENT  FEES. — On  depositing  specification, 
£'2  10s. ;  to  the  Law  Officer  for  any  appointment,  <£2  4s. 
6d. ;  on  obtaining  letters  patent,  <£2  105. ;  at  or  before  the 
expiration  of  the  third  year,  £15;  at  or  before  the  expi- 


VICTORL,,  197 

ration  of  the  seventh  year,  £20;  to  the  Law  Officer  with 
particulars  of  objections,  £2  4s.  6d.;  on  presenting  peti- 
tion for  extension  or  confirmation,  £2  10s. ;  every  search 
and  inspection,  Is./  entry  of  assignment  or  license,  10s./ 
certificate  of  assignment  or  license,  10s./  filing  memo- 
randum of  alteration  or  disclaimer,  £2  10s.  /  entering  any 
caveat,  £2  10s.  /  copy  or  extract  of  any  writing,  per  com- 
mon law  folio,  Is. 

456.  DOCUMENTS  REQUIRED,  AND  WHERE  TO  BE  LEFT. — 
An  instrument  in  writing  (and  copy)  describing  inven- 
tion, (with  drawing,  if  any,)  and  deposited  at  the  office 
of  the  Chief  Secretary  at  Melbourne  for  provisional  pro- 
tection for  six  months.     Such  specification,  on  parch- 
ment, twenty  inches  by  fifteen,  may  be  amended  within 
said  term.     Notice  to  proceed  within  six  months  of  de- 
posit.    Opposition  open  for  one  month,  before  the  Law 
Officer  appointed  to  hear  applications  and  objections  and 
to  award  costs.     Warrant  for  letters  patent  issued  by 
said  Law  Officer.     Letters  patent  to  be  sealed  within 
three  months  after  the  date  of  said  warrant  and  during 
the  term  of  provisional  protection ;  said  term  may  be 
prolonged  for  one  month  by  the  Governor.     Disclaimer 
or  memorandum  of  alteration  entered  with  or  without 
public  notice. 

457.  ASSIGNMENTS. — Entered  in  the  Register  of  Pro- 
prietors. 

458.  SPECIFICATIONS  AND  INDEXES  TO  SPECIFICATIONS. — 
Open  to  the  public  at  all  reasonable  times.     Certified 
copies  to  be  evidence. 

459.  LISTS  OF  PATENTS  DELIVERED. — Applications  pub- 
lished in  the  Government  gazette;  also  in  the  Registry 
of  Patents  and  Proprietors,  open  to  the  public. 

17* 


198  FOREIGN  PATENT  LAWS. 

460.  PENALTIES  AND  FINES. — Falsification  or  forgery 
of  entries  punishable  as  a  misdemeanor  by  labor  on  the 
roads  or  other  public  works,  for  any  term  not  exceeding 
five  years,  or  by  fine  and  imprisonment.     Penalty  for 
unauthorized  uses  of  the  word  patent  £100 ;  one  half  to 
her  Majesty  and  the  other  half,  with  full  costs  of  suit,  to 
any  person  who  shall  sue  for  the  said  penalty  by  action 
of  debt. 

461.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — The  appli- 
cant is  to  deposit  at  the  office  of  the  Chief  Secretary  an 
instrument  under  his  hand  seal,  a  particular  description 
of  his  invention,  with  a  copy  of  the  instrument,  and  of 
drawings,  if  any,  by  doing  which  he  obtains  six  months' 
protection,  with  the  privilege  of  letters  patent  for  that 
period.     The  specification  may  be  amended  during  the 
six  months. 

The  specification  is  to  be  on  skins  of  parchment,  writ- 
ten on  both  sides,  twenty-one  inches  long  by  fifteen  broad, 
with  a  margin  of  an  inch  and  a  half  on  each  side.  The 
drawings  may  be  on  larger  sheets  of  parchment,  with  a 
margin  of  an  inch  and  a  half.  The  copies  of  specifica- 
tion and  drawings  are  to  be  on  sheets  of  paper  of  the 
same  size  as  the  parchment. 

After  making  a  deposit  of  these  documents  he  is  to 
give  notice,  at  the  chambers  of  the  Attorney  or  Solicitor 
General,  of  his  intention  to  proceed  for  a  patent,  stating 
the  title  of  the  invention  and  date  of  deposit,  and  produce 
at  the  same  time  the  certificate  of  the  deposit.  The  Law 
Officer  is  then  to  give  the  applicant  an  appointment  in 
due  form,  which  he  is  to  publish  in  the  Government  ga- 
zette and  in  some  Melbourne  newspaper,  and  twice  in 


VICTORIA.  199 

some  newspaper  published  at  or  near  where  the  appli- 
cant uses  the  invention  or  resides. 

The  letters  patent  are  to  be  issued  by  the  Chief  Secre- 
tary within  three  months  after  the  Law  Officer's  warrant 
and  during  the  protection;  but  if  the  sealing  has  been 
delayed  by  accident,  and  not  by  the  willful  neglect  of  the 
applicant,  it  may  be  done  within  one  month  after  the 
expiration  of  the  protection,  with  the  sanction  of  the 
Governor. 

462.  FORM  OF  APPLICATION  FOR  PATENT. — 

I,  ,  of  ,  [state  address  and  profession,]  send 

greeting.  Whereas  I  am  desirous  of  obtaining  royal  letters  patent  for  se- 
curing unto  me  her  Majesty's  special  license,  that  I,  my  executors,  admin- 
istrators, and  assigns,  and  such  others  as  I  or  they  should  at  any  time  agree 
with,  and  no  others,  should,  and  lawfully  might,  from  time  to  time,  and  at 
all  times  during  the  term  of  fourteen  years,  (to  be  computed  from  the  day 
on  which  this  instrument  shall  be  left  at  the  office  of  the  Chief  Secretary,) 
make,  use,  exercise,  and  vend,  within  the  Colony  of  Victoria  and  its  depend- 
encies, an  invention  for  [insert  the  title  of  the  invention]  •  and  in  order  to 
obtain  the  said  letters  patent  I  must,  by  an  instrument  in  writing,  under 
my  hand  and  seal,  particularly  describe  and  ascertain  the  nature  of  the 
said  invention,  and  in  what  manner  the  same  is  to  be  performed,  and  must 
also  enter  into  the  covenant  hereafter  contained.  Now,  know  ye,  that  the 
motive  of  the  said  invention,  and  the  manner  in  which  the  same  is  to  be 
performed,  is  particularly  described  and  ascertained  in  and  by  the  follow- 
ing statement,  that  is  to  say,  [describe  the  invention.]  And  I  do  hereby,  for 
myself,  my  heirs,  executors,  and  admistrators,  covenant  with  her  Majesty, 
her  heirs  and  successors,  that  I  believe  the  said  invention  to  be  a  new  inven- 
tion as  to  the  public  use  and  exercise  thereof,  and  that  I  do  not  know  or 
believe  that  any  other  person  than  myself  is  the  true  and  first  inventor 
of  the  said  invention,  and  that  I  will  not  deposit  these  presents  at  the  ofhce 
of  the  Chief  Secretary  with  any  such  knowledge  or  belief  as  last  aforesaid. 

In  witness,  &c. 


200 


FOREIGN  PATENT  LAWS. 


XLIV.  "West  Indies,  (Dutch.) 


SEC. 

463.  Law,  date,  and  where  recorded. 

464.  Kinds  of  patents. 

465.  Duration. 

466.  Government  fees. 

467.  Documents  required,  &c. 

468.  Working. 


SEC. 

469.  Assignments. 

470.  Annulment. 

471.  List  of  patents  delivered. 

472.  Specifications  published. 

473.  Originals      of     specifications, 

(models.) 


463.  LAW,  DATE,  AND  WHERE  RECORDED. — Decree  of 
4th  July,  1844.     (See  Commissioners  of  Patents'  Journal, 
vide  supra  71,  No.  322.) 

464.  KINDS  OF  PATENTS. — Patents  of  invention,  im- 
provement, and  of  importation. 

465.  DURATION. — Five,  ten,  and  fifteen  years  at  most. 
Original  term  prolonged.    Foreign  inventions  according 
to  the  duration  of  the  original  patent. 

466.  GOVERNMENT  FEES. — ,£15  for  five  years;  from  £30 
to  £40  (according  to  importance)  for  ten  years;  from 
£60  to  £70  for  fifteen  years.     Inventions  already  pat- 
ented in  the  Netherlands  are  subject  only  to  the  usual 
stamp  duties.     The  remainder  of  taxes  of  patents  an- 
nulled returned. 

467.  DOCUMENTS  REQUIRED  AND  WHERE  TO  BE  LEFT.— 
An  application  to  the  Governor  General,  at  Paramaribe; 
a  description  and  drawings,  &c.,  (sealed;)  an  undertaking 
to  supply  the  patent  article  within  two  years,  and  to  take 
up  the  patent  within  three  months  of  its  date,  and  to  pay 
the  fees  thereon. 

468.  WORKING. — "Within  two  years  from  the  date  of 
patent. 

469.  ASSIGNMENTS. — By  consent  of  the  Governor  Gen- 
eral.    Registration  fee,  £2. 


WURTEMBERG.  201 

470.  ANNULMENT. — In  case  of— 1.  Defective  or  false 
specification;    2.   Previous  publication;    3.   Itfot  being 
worked  within  two  years ;  4.  Obtaining  patents  abroad, 
except  the  Netherlands  and  their  colonies;  5.  Not  sup- 
plying the  patent  article  within  two  years  at  a  moderate 
price;  6.  For  reasons  of  public  safety;  7.  For  neglecting 
to  register  assignments. 

471.  LIST  OF  PATENTS  DELIVERED. — In  the  Surinam 
Courant,  and  in  a  special  register,  open  to  applicants  for 
patents. 

472.  SPECIFICATIONS  PUBLISHED. — At  the  expiration  or 
annulment  of  patents,  unless  it  be  found  advisable  to 
delay  such  publication. 

473.  ORIGINALS  OF  SPECIFICATIONS,  (MODELS.) — At  the 
Governor  General's,  at  Paramaribe.    A  copy  at  the  Co- 
lonial Ministry  at  the  Hague. 


XLY.  Wurtemberg. 


SEC. 

474.  Law,  date,  and  where  recorded. 

475.  Kinds  of  patent. 

476.  Previous  examination. 

477.  Duration. 

478.  Government  fees. 

479.  Documents  required  and  where 

to  be  left. 

480.  Working  and  prolongation. 


SEC. 

481.  Assignments. 

482.  Specifications,  inspection,  and 

copies  of. 

483.  Annulment. 

484.  List  of  patents  delivered. 

485.  Specifications  published. 

486.  Other  provisions. 

487.  Proceedings  to  obtain  a  patent. 


474.  LAW,  DATE,  AND  WHERE  RECORDED. — Royal  decree 
of  5th  August,  1836.  Law  of  the  29th  June,  1842.  (See 
Commissioners  of  Patents'  Journal,  vide  supra  71,  Nos.  314, 
995.) 


202  FOREIGN  PATENT  LAWS. 

475.  KINDS  OF  PATENTS. — Patents  of  invention  and 
importation  granted  to  natives  of  Wurtemberg  and  of 
the  Zollverein. 

476.  PREVIOUS  EXAMINATION. — For  novelty.    No  guar- 
anty as  to  priority  or  utility. 

477.  DURATION. — Ten  years  at  most.     Prolonged  by 
legislative  act.     Patents  of  importation  become  extinct 
at  the  expiration  of  the  foreign  patent. 

478.  GOVERNMENT  FEES. — From  8s.  4d.  to  £1  14s.  an- 
nually. 

479.  DOCUMENTS  REQUIRED  AND  WHERE  TO  BE  LEFT. — 
A  petition  of  inventor  or  importer  to  the  Minister  of  the 
Interior;  a  description,  drawings,  and  models,  or  pat- 
terns.    To  be  left  with  the  magistrate  of  the  district. 

480.  WORKING  AND  PROLONGATION.  —  To  be  worked 
within  and  not  to  be  interrupted  for  two  years,  except 
patentee  shows  good  cause  for  delay.     Original  terms 
prolonged  to  ten  years,  if  applied  for  before  the  begin- 
ning of  the  last  year,  and  in  cases  of  importation  before 
the  expiration  of  the  first  half  of  the  original  term. 

481.  ASSIGNMENTS. — Published. 

482.  SPECIFICATIONS,  INSPECTION  AND  COPIES  OF. — By 
natives  and  by  consent  of  the  patentee  in  the  last  year  of 
the  legal  term  of  the  patent.     Patents  of  importation  in 
the  latter  half  of  their  legal  term.     Free  when  expired. 
At  the  Ministry  of  the  Interior. 

483.  ANNULMENT. — For  want  of  novelty;  for  having 
been  known  or  worked  abroad  or  in  Wurtemberg;  for 
false  statements  and  incorrect  descriptions,  whereby  pat- 
entees, moreover,  incur  a  penalty. 

484.  LIST  OF  PATENTS  DELIVERED. — In  the  Wurtem- 
berg Gewerbeblatt. 


WURTEMBERG.  203 

485.  SPECIFICATIONS  PUBLISHED. — In  the  Wurtemberg 
G-ewerbeblatt  and  other  technical  periodicals. 

486.  OTHER  PROVISIONS. — Parties  using  a  patent  pro- 
cess in  complete  ignorance  of  the  patent  right  of  a  third 
party  are  liable  to  confiscation  and  damages.     Patent 
articles  may  be  imported  without  consent  of  the  patentee. 

487.  PROCEEDINGS  TO  OBTAIN  A  PATENT. — Applicants 
must  deliver  a  petition  to  the  authorities  of  the  district 
in  which  they  reside  or  intend  to  carry  on  their  works, 
with  a  complete  and  true  specification,  and  the  required 
drawings,   models,   or  plans.      Specifications   must  be 
under  a  sealed  cover,  not  to  be  opened  by  the  district 
authorities.     The  authorities  are  then  to  give  to  appli- 
cants a  certificate  stating  the  day  and  hour  when  the 
delivery  took  place,  and  forward  the  documents  to  the 
Minister  of  the  Interior. 


FA.RT  III. 


IN  THE 


WITH 

FOKMS,  NOTES,  AND  AUTHOEITIES. 


18  206 


PROCEDURE  IN  UNITED  STATES  PATENT  OFFICE, 


WITH 


FORMS,  NOTES,  AND  AUTHORITIES. 


I.  Caveat. 


SEC. 

1.  Eequisites  and  term  of  caveat. 

2.  Proceedings  in  case  of  an  inter- 

fering application. 

3.  When  an  alien  may  file  a  caveat. 

4.  No  notice  given  of  pending  ap- 

plications. 

5.  Renewal. 

6.  Description. 

7.  Drawings. 

8.  Purpose  of  caveat. 


SEC. 
9.  Omission  to  give  notice. 

10.  Effect  of  a  caveat  upon  a  subse- 

quent patent. 

11.  Papers  not   to  be  withdrawn, 

copies. 

12.  Caveat  as  evidence. 

13.  Notice  to  the  Commissioner  only. 

14.  Petition. 

15.  Description. 

16.  Oath. 


1.  REQUISITES  AND  TERM  OF  CAVEAT. — Any  citizen  of 
the  United  States  who  shall  have  made  any  new  inven- 
tion or  discovery,  and  shall  desire  further  time  to  mature 
the  same,  may,  on  payment  of  the  duty  required  by  law, 
($10,)  file  in  the  Patent  Office  a  caveat,  setting  forth  the  de- 
sign thereof,  and  of  its  distinguishing  characteristics,  and 
praying  protection  of  his  right  until  he  shall  have  ma- 
tured his  invention ;  and  such  caveat  shall  be  filed  in  the 
confidential  archives  of  the  office  and  preserved  in  se- 

207 


208  PROCEDURE  IN  THE  PATENT  OFFICE. 

crecy,  and  shall  be  operative  for  the  term  of  one  year 
from  the  filing  thereof.     (Act  of  July  8,  1870,  §  40.) 

2.  PROCEEDINGS  IN  CASE  OF  AN  INTERFERING  APPLICA- 
TION.— If  application  shall  be  made  within  the  year  by 
any  other  person  for  a  patent  with  which  such  caveat 
would  in  any  manner  interfere,  the  Commissioner  shall 
deposit   the    description,    specification,   drawings,    and 
model  of  such  application  in  like  manner  in  the  confi- 
dential archives  of  the  oiSce,  and  give  notice  thereof,  by 
mail,  to  the  person  filing  the  caveat,  who,  if  he  would 
avail  himself  of  his  caveat,  shall  file  his  description,  spec- 
ifications, drawings,  and  model  within   three   months 
from  the  time  of  ^placing  said  notice  in  the  post  office  in 
Washington,  with  the  usual  time  required  for  transmit- 
ting it  to  the  caveator  added  thereto,  which  time  shall 
be  indorsed  on  the  notice.     (Ib.) 

3.  WHEN  AN  ALIEN  MAY  FILE  A  CAVEAT. — An  alien 
shall  have  the  privilege  of  filing  a  caveat  if  he  shall  have 
resided  in  the  Ujiited  States  one  year  next  preceding  the 
filing  of  his  caveat,  and  made  oath  of  his  intention  to 
become  a  citizen.     (Ib.} 

4.  No  NOTICE  GIVEN  OF  PENDING  APPLICATIONS. — The 
caveator  will  not  be  entitled  to  notice  of  any  application 
pending  at  the  time  of  filing  his  caveat,  nor  of  any  appli- 
cation filed  after  the  expiration  of  one  year  from  the  date 
of  filing  tho  caveat.     (Patent  Office  Rules,  July,  1870.) 

5.  RENEWAL. — The  caveator  may  renew  his  caveat  at 
the  end  of  one  year  by  paying  a  second  caveat  fee  of  $10^ 
which  will  continue  it  in  force  for  one  year  longer,  and 
so  on  from  year  to  year  as  long  as  the  caveator  may  de- 
sire.    (Ib.) 

6.  DESCRIPTION. — A  caveat  need  not  contain  as  partic- 


CAVEAT.  209 

ular  a  description  of  the  invention  as  is  requisite  in  a  spec- 
ification ;  but  still  the  description  should  be  sufficiently 
precise  to  enable  the  office  to  judge  whether  there  is  a 
probable  interference  when  a  subsequent  application  is 
filed.  (Ib.) 

It  is  to  set  forth  the  "  design  and  purpose  "  of  the  in- 
vention and  its  "  distinguishing  characteristics ;"  but  it  is 
not  necessary  that  it  should  explain  the  principle  involved, 
or  the  modes  in  which  it  can  be  applied,  nor  how  it  is 
distinguished  from  other  inventions.  (11  Opinions  of 
Attorneys  General,  65.) 

Nor  is  it  necessary  to  accompany  the  caveat  with  spec- 
imens of  ingredients,  or  compounds,  or  model.  (Ib.) 

It  is  not  required  to  be  specific  in  its  terms,  nor  is  il 
presumed  to  describe  the  whole  invention  of  the  party 
but  is  filed  in  the  office  rather  as  a  warning  that  the  in 
ventor  is  in  the  exercise  of  due  diligence  in  the  pursui 
and  perfection  of  his  discovery.  (Collins  v.  White,  MS 
Appeal  Cases,  D.  C.,  1860.) 

7.  DRAWINGS. — "When  practicable,  the  caveat  must  b* 
accompanied   by  drawings  or  sketches.     (Patent   Office 
Rules,  July,  1870.) 

8.  PURPOSE  OF  CAVEAT. — A  caveat  answers  a  double 
purpose :  first,  to  give  notice  of  the  inventor's  claim ;  and, 
second,  to  prevent  a  patent  from  issuing  to  another  for 
the  same  thing.     (Allen  v.  Hunter,  6  McLean,  304.) 

Its  office  is  to  save  the  discoverer  of  an  invention 
from  the  effect  of  the  rule  of  law,  that  gives  to  the  in- 
ventor who  first  adapts  his  invention  to  practical  use  the 
right  to  the  grant  of  a  patent ;  and  if  the  Commissioner 
complies  with  the  terms  of  §  12  of  the  act  of -1836,  as  to 
giving  the  caveator  notice  of  any  interfering  application, 
~  18* 


210  PROCEDURE  IN  THE  PATENT  OFFICE. 

it  is  to  secure  him  against  the  effect  of  the  rule.  (Phelps, 
Dodge  <$•  Co.  v.  Brown  Bros.,  IS  How.,  Pr.  8.) 

The  effect  of  a  caveat  is  to  protect  the  claim  of  an  in- 
ventor from  all  interfering  applications  made  within  one 
year  after  its  filing,  by  requiring  the  office  to  notify  him 
of  such  applications,  that  he  may  resist  the  interference 
if  he  chooses.  But  if,  during  the  time  which  elapses 
between  the  filing  of  his  caveat  and  his  application,  he 
allows  his  invention  to  go  into  public  use,  his  caveat  will 
not  protect  him.  (Bell  v.  Daniels,  1  Fish.,  372.) 

9.  OMISSION  TO  GIVE  NOTICE. — If  the  Commissioner 
accidentally  omits  to  give  the  caveator  the  notice  requir- 
ed, his  rights  will  not  be  prejudiced  thereby.  (Phelps, 
Dodge  $  Co.  v.  Brown  Bros.,  18  How.,  Pr.  8.) 

A  patent  should  not  operate  to  the  prejudice  of  a  sub- 
sequent applicant,  if  he  had  a  caveat  on  file  embracing 
the  invention  when  the  application  was  filed  on  which 
the  patent  issued.  (Hamilton  v.  Foster,  Commissioner's 
Decisions,  1869,  p.  30.)  _ 

And  if  a  conflicting  caveat  is  in  force  when  an  appli- 
cation is  filed,  though  the  application  is  rejected,  and  the 
rejection  is  not  set  aside  until  after  the  caveat  has  ex- 
pired, yet  the  caveator  is  then  entitled  to  be  notified. 
(Kenney  ex  parte,  Commissioner's  Decisions,  1869,  p.  97.) 

In  the  case  of  Kenney  ex  parte  the  Commissioner  says: 

"The  application  in  this  case  was  filed  August  19, 
1869,  was  rejected  by  the  examiner  and  examiners-in- 
chief  and  allowed  by  the  Commissioner.  The  examiner 
now  reports  '  that  a  caveat  covering  the  same  device,  ap- 
parently, was  filed  September  23, 1868.'  The  year  would, 
therefore,  expire  September  23,  1869,  or  thirty-five  days 
after  the  filing  of  Kenney's  application.  No  notice  of 


CAVEAT.  211 

Kenney's  application  was  given  to  the  caveator.  The 
act  of  July  4,  1836,  §  12,  provides  that  'if  an  application 
be  made  by  any  other  person  (than  the  caveator)  within 
one  year  from  the  time  of  filing  said  caveat,  *  "  *  * 
it  shall  be  the  duty  of  the  Commissioner  to  give  notice 
to  the  person  filing  such  caveat.' 

"T3ut  it  has  not  been  the  practice  of  the  office  to  give 
this  notice,  unless  the  device  presented  was  deemed  pat- 
entable.  In  any  other  case  the  caveator  would  be  put 
to  unnecessary  expense;  for  the  ofiice  would  not  inform 
him  in  advance  that  the  device  was  not  considered  novel. 
Such  a  notice  would,  in  fact,  constitute  a  preliminary 
examination. 

"When  the  device  is,  prima  facie,  novel  and  patenta- 
ble,  the  notice  has  been  given,  if  an  application  has  been 
filed  even  within  the  last  moment  of  the  prescribed 
year. 

"  The  question  presented  by  the  examiner  for  consid- 
eration under  the  foregoing  state  of  facts  is,  should  no- 
tice now  be  given  to  the  caveator,  and  three  months 
be  allowed  him  to  complete  his  invention? 

"  It  is  obvious  that  at  the  time  of  the  filing  of  Ken- 
ney's application  the  caveator  was  entitled  to  notice  of 
it;  for  it  is  now  decided  that  the  invention  was  pat- 
entable.  This  made  a  clear  case,  under  the  statute,  of 
an  application  made  within  one  year  from  the  time  of 
filing  said  caveat.  The  fact  that  the  three  months'  no- 
tice could  not  be  given  within  the  year  was  not  mate- 
rial, for  the  language  of  the  section  is  so  unequivocal 
that,  if  an  application  were  filed  on  the  last  day  of  the 
year,  the  caveator  would  be  entitled  to  notice,  and  to 
three  months  for  the  purpose  of  completing  his  inven- 


212         PROCEDURE  IN  THE  PATENT  OFFICE. 

tion,  although  the  effect  would  be  to  extend  the  protec- 
tion given  by  the  caveat  to  fifteen  months  instead  of 
twelve. 

"  But"  it  is  said  that  when  this  application  was  filed  it 
was  not  believed  that  the  invention  was  patentable,  and 
that,  therefore,  under  the  practice  of  the  office,  notice 
was  properly  withheld;  that,  meanwhile,  the  year  has 
expired,  and  the  caveat,  not  having  been  renewed  or  fol- 
lowed by  an  application,  can  now  afford  no  protection, 
nor  can  notice  be  now  given  to  the  caveator.  The 
answer  is,  that  while  the  office  practice  of  withholding 
notice  until  the  question  of  patentability  is  determined 
is  wise,  yet  that  practice  must  not  be  used  to  work  a 
wrong  instead  of  a  benefit  to  the  caveator.  When  the 
question  of  patentability  is  finally  determined  in  favor 
of  the  applicant,  it  relates  back  to  the  filing  of  the  appli- 
cation. It  is  a  determination  that  there  was  then  a  pat- 
entable subject-matter,  and  one  that  interfered  with  the 
caveat.  It  is  a  judgment  that  the  case  was  one  in  which 
the  caveator  ought  to  have  been  notified  when  the  appli- 
cation was  filed. 

"It  must  not  be  forgotten  that  the  caveator  is  no  party 
to  the  delay.  He  knows  nothing  of  the  interfering  ap- 
plication, nothing  of  the  disputed  question  of  patent- 
ability. He  is  helpless,  except  as  his  rights  are  protected 
by  the  statute,  which  ought,  therefore,  to  be  liberally 
construed  in  his  favor. 

"If  the  application  had  been  filed  a  few  days  after  the 
caveat,  and  the  question  of  patentability  had  been  dis- 
cussed for  the  remainder  of  the  year,  being  finally  deter- 
mined only  a  few  days  after  its  expiration,  it  would  be 
thought  a  very  harsh  rule  that  should  deprive  the  cave- 


CAVEAT.  213 

ator  of  notice.  He  would  be  justified  in  saying  that,  if 
he  had  been  notified  at  the  time  of  filing  the  application, 
he  would,  under  the  spur  of  the  interference,  have  com- 
pleted his  invention  long  before,  and  that  the  law,  in  pro- 
viding for  notice,  and  three  months  afterward  for  the 
completion  of  the  invention,  intended  to  give  him  the 
benefit  of  that  spur. 

"But  the  case  is  not  relieved  from  any  of  its  difficulty 
by  the  fact  that  the  invention  was  filed  just  before  the 
year  covered  by  the  caveat  expires.  On  the  contrary, 
the  lapse  of  time  increases  the  presumption  that  the  cave- 
ator,  and  not  the  applicant,  was  the  first  inventor.  At 
all  events,  whether  first  or  second,  he  is  entitled  to  the 
notice  provided  for  by  law,  to  which  the  practice  of  the 
office,  however  expedient,  must  always  be  subordinate. 

"I  am  of  opinion  that  the  caveator  in  this  case  must 
be  notified  to  complete  his  application  within  three 
months,  and  the  case  must  be  suspended  to  await  his 
action."  (Commissioner's  Decisions,  1869,  p.  97.) 

10.  EFFECT  OF  A  CAVEAT  UPON  A  SUBSEQUENT  PATENT. — 
In  the  case  of  Johnson  v.  Root  the  ruling  of  Sprague,  J., 
was  as  follows : 

"It  is  contended,  on  the  part  of  the  defendant,  that 
the  caveat  itself  is  conclusive  evidence  that  the  inven- 
tion was  not  perfected.  You  will  observe  that  the  appli- 
cation, which  is  in  the  caveat  before  you,  made  to  the 
Patent  Office  by  Mr.  Johnson  for  leave  to  file  a  caveat, 
sets  forth  that  he  has  made  a  certain  new  and  useful 
improvement  in  the  sewing  machine,  and  that  he  is  then 
making  experiments  to  perfect  it,  and  he  asks  leave  to 
file  a  caveat  to  secure  it.  The  defendant  insists  that  that 
application  is  of  itself  conclusive  evidence  that  he  has 


214  PROCEDURE  IN  THE  PATENT  OFFICE. 

not  perfected  it.  We  will  look  at  it,  gentlemen,  and  see. 
I  do  not  instruct  you  that  it  is  conclusive  evidence,  but 
it  is  evidence  for  you  to  take  into  view  in  connection 
with  the  other  evidence,  and  in  connection  with  the 
other  parts  of  the  same  instrument,  in  which  he  begins 
by  saying  that  he  has  made  a  new  and  useful  invention 
in  the  sewing  machine.  Now,  gentlemen,  although  a 
caveat  is  understood  to  be,  and  in  this  instance  is,  filed 
in  order  to  allow  the  party  to  perfect  his  machine,  yet  if, 
in  point  of  fact,  the  invention  had  been  perfected  in  the 
eye  of  the  law,  as  I  have  explained  to  you,  then,  if  you 
are  satisfied  of  that  from  the  evidence,  you  may  deem  it, 
for  the  purposes  of  this  trial,  as  perfected.  Or  it  may 
happen  that  a  person  may  choose  to  file  a  caveat  while 
he  is  going  on  and  making  improvements  upon  an  inven- 
tion which  he  has  already  completed,  so  as  to  be  of  prac- 
tical utility.  Therefore,  gentlemen,  I  would  say  to  you 
that  you  will  take  into  consideration  the  declaration  of 
the  plain  tiff  himself  in  the  application,  that  he  had  made 
a  new  and  useful  improvement  in  sewing  machines,  and 
the  further  declaration  that  he  is  making  experiments 
in  order  to  perfect  his  invention,  and  the  subsequent  dec- 
laration that  he  has  made  a  new  and  useful  improve- 
ment, and  the  other  evidence  in  relation  to  the  case — 
that  is,  what  is  described  in  the  caveat  and  the  model 
made  in  1848 — and  see  if  that  exhibits  to  you  a  perfect 
machine;  and  then  such  farmer  evidence  as  you  have 
as  of  the  actual  operation  of  the  machine  that  will  be 
before  you. 

"Now,  gentlemen,  if  he  had  perfected  it,  then  he  had 
a  right  to  embrace  it  in  a  patent  that  he  should  after- 
wards take  out.  If  he  had  not  perfected  it,  then  another 


CAVEAT.  215 

question  will  arise,  and  that  is,  had  he  invented  the  feed- 
ing mechanism  at  that  time,  and  did  he  use  due  diligence 
to  perfect  that  and  put  it  into  a  perfect  machine,  so  as  to 
make  it  of  some  practical  utility? 

"If  the  invention  was  perfected,  as  I  have  already  said, 
or,  if  not  perfected,  if  Mr.  Johnson  used  reasonable  dil- 
igence to  perfect  it,  then  he  had  a  right  to  have  it  incor- 
porated into  his  patent,  and  to  supersede  those  that  had 
intervened  between  his  first  discovery  and  his  subsequent 
taking  out  of  the  patent.  If  he  had  not  perfected  it, 
and  did  not  use  due  diligence  to  carry  it  into  effect,  and, 
in  the  mean  time,  before  he  got  his  patent,  some  one 
else  had  invented  and  used  and  incorporated  into  a  prac- 
tical useful  machine  that  mode  of  feeding,  then  he  could 
not,  by  subsequent  patent,  appropriate  to  himself  what 
was  embraced  in  the  former  machine  between  his  caveat 
and  the  obtaining  of  his  patent."  (1  Fish.,  351.) 

The  fact  that  a  patent  is  granted  to  one  person  while 
another  has  a  caveat  pending  and  in  force  will  not  of 
itself  vacate  the  patent  granted  nor  authorize  the  Com- 
missioner to  grant  a  patent  to  the  caveator.  (Cochrane 
v.  Waterman,  MS.  Appeal  Ca.ses,D.  C.,  1844.) 

11.  CAVEAT  PAPEKS  CANNOT  BE  WITHDRAWN  FROM  THE 
OFFICE  nor  undergo  alteration  after  they  have  once  been 
filed;  but  the  caveator,  or  any  person  properly  author- 
thorized  by  him,  can  at  any  time  obtain  copies  of  the 
caveat  papers  at  the  usual  rates.     (Patent  Office  Rules, 
July,  1870.) 

12.  CAVEAT  AS  EVIDENCE. — A  caveat  may  be  resorted 
to  to  assist  in  construing  a  patent.     (Smith  v.  Downing, 
1  Fish.,  64.) 

And  it  is  evidence  as  to  an  invention,  so  far  as  it  ex- 


216  PROCEDURE  IN  THE  PATENT  OFFICE. 

tends  to  the  description  of  the  invention  and  the  machin- 
ery which  was  then  constructed.  (Jones  v.  Wetherell,  MS. 
Appeal  Cases,  D.  C.,  1855.) 

But  a  caveat  is  not  conclusive  evidence  that  an  inven- 
tion is  not  perfected.  (Johnson  v.  Root,  1  Fish.,  351.) 

A  filed  a  caveat  in  the  Patent  Office  April  17,  1854. 
B  made  application  for  a  patent  for  the  same  invention 
November,  1854.  JSTo  notice  was  given  to  A  of  this  ap- 
plication, but  a  patent  was  granted  to  B  January  9, 1855. 
A  patent  was  subsequently  granted  to  A.  In  a  suit  of 
the  assignees  of  B  against  the  assignees  of  A,  held  that 
the  omission  to  give  notice  to  A  might  be  set  up  as  one 
of  the  defenses  under  §  15  of  the  act  of  July  4,  1836,  as 
proof  that  B  "had  surreptitiously  or  unjustly  obtained 
the  patent  for  that  which  was  in  fact  discovered  by  an- 
other," &c.  (Phelps  v.  Brown  Bros.,  1  Fish.,  479.) 

13.  CAVEAT  NOTICE  TO  THE  COMMISSIONER  ONLY. — The 
caveat  gives  no  notice  to  the  world  or  even  to  the  inter- 
fering applicant.     It  is  notice  to  the  Commissioner  only. 
(Hildreth  v.  Heath,  MS.  Appeal  Cases,  D.  C., 1841.) 

But  the  Commissioner  can  perform  no  act  upon  a  ca- 
veat but  filing  it,  nor  in  consequence  of  it,  except  to 
give  the  caveator  notice  of  a  conflicting  application  when 
made.  (11  Opinions  Attorneys  General,  65.) 

14.  FORM  OF  PETITION. — 

The  petition  of  Frank  Foresight,  of  Brandenberg,  in  the  county  of  Mead, 
and  State  of  Kentucky,  respectfully  represents — 

That  he  has  made  certain  improvements  in  velocipedes,  and  that  he  is 
now  engaged  in  making  experiments  for  the  purpose  of  perfecting  the 
same,  preparatory  to  applying  for  letters  patent  therefor.  He  therefore 
prays  that  the  subjoined  description  of  his  invention  may  be  filed  as  a 
caveat  in  the  confidential  archives  of  the  Patent  Office. 

FRANK  FORESIGHT. 


CAVEAT.  217 

15.  DESCRIPTION. — 

The  following  is  a  description  of  my  newly-invented  velocipede,  which 
is  as  full,  clear,  and  exact  as  I  am  able  at  this  time  to  give,  reference  being 
had  to  the  drawing  hereto  annexed: 

This  invention  relates  to  that  class  of  velocipedes  in  which  there  are 
two  wheels  connected  by  a  beam,  forming  a  saddle  for  the  rider,  the  feet 
being  applied  to  cranks  that  revolve  the  front  wheel. 

The  object  of  m^  invention  is  to  render  it  unnecessary  to'turn  the  front 
wheel  so  much  as  heretofore,  and  at  the  same  time  to  facilitate  the  turning 
of  sharp  curves.  This  I  accomplish  by  fitting  the  front  and  the  hind 
wheels  on  vertical  pivots,  and  connecting  them  by  means  of  a  diagonal 
bar,  as  shown  in  the  drawing,  so  that  the  turning  of  the  front  wheel  also 
turns  the  back  wheel  with  a  position  at  an  angle  with  the  beams,  thereby 
enabling  it  easily  to  turn  a  curve. 

In  the  drawing  A  is  the  front  wheel,  B  the  hind  wheel,  and  C  the  stand- 
ards extending  from  the  axle  of  the  front  wheel  to  the  vertical  pivot  a  in 
the  beam  b,  and  D  is  the  cross-bar  upon  the  end  of  a,  by  which  the  steer- 
ing is  done.  The  hind  wheel  B  is  also  fitted  with  jaws  c  and  a  vertical 
pivot  d.  FEAITK  FORESIGHT. 

Witnesses:  ANDBEW  AXLE. 

WILLIAM  WHEELWRIGHT. 

16.  OATH. — Xo  caveat  can  be  filed  in  the  secret  ar- 
chives of  the  office  unless  accompanied  by  an  oath  of  the 
caveator  that  he  is  a  citizen  of  the  United  States,  or,  if 
he  is  an  alien,  that  he  has  resided  for  one  year  last  past 
within  the  United  States  and  has  made  oath  of  his  inten- 
tion to  become  a  citizen  thereof;  nor  unless  the  appli- 
cant also  states,  under  oath,  that  he  believes  himself  the 
original  inventor  of  the  art,  machine,  or  improvement 
set  forth  in  his  caveat.     (Patent  Office  Rules,  July,  1870.) 

The  form  of  oath  will  be  substantially  that  provided 
for  original  applications,  except  that,  as  a  caveat  can  only 
be  filed  by  a  citizen,  or  an  alien  who  has  resided  for  one 
year  last  past  in  the  United  States,  and  made  oath  of  his 
intention  to  become  a  citizen,  the  oath  should  be  modi- 
fied accordingly.  (Ib.,  vide  infra,  §323.) 
19 


218 


PROCEDURE  IN  THE  PATENT  OFFICE. 


II.  Subject-Matter  of  the  Application. 


SEO. 

17.  What  may  be  patented. 

18.  Inventions  patented  abroad. 

19.  Abstract  principle. 

20.  Application  of  a  law  of  nature. 

21.  Effect. 

22.  New  application ;  double  use. 
23..  Mechanical  equivalents. 

24.  Mechanical  skill. 

25.  Discovery. 

26.  Novelty. 

27.  Presumption  of  novelty. 

28.  Utility. 

29.  Harmful  inventions  not  patent- 

able.  • 

30.  Art. 


SEO. 

31.  Process. 

32.  Machine. 

33.  Machines  classified. 

34.  Form. 

35.  Manufacture. 

36.  Identity  of  principle. 

37.  Composition  of  matter. 

38.  Improvement. 

39.  Priority  of  invention. 

40.  Lost  art. 

41.  Prior  experiments. 

42.  Prior  publication. 

43.  Prior  foreign  patent. 

44.  Unity  or  diversity  of  invention. 

45.  Division  of  the  application. 


17.  WHAT  MAY  BE  PATENTED. — Any  person  who  has 
invented  or  discovered  any  new  and  useful  art,  machine, 
manufacture,  or  composition  of  matter,  or  any  new  and 
useful  improvement  thereof,  not  known  or  used  by  others 
in  this  country,  and  not  patented  or  described  in  any 
printed  publication  in  this  or  any  foreign  country  before 
his  invention  or  discovery  thereof,  and  not  in  public  use 
or  on  sale  for  more  than  two  years  prior  to  his  applica- 
tion, unless  the  same  is  proved  to  have  been  abandoned, 
may,  upon  payment  of  the  duty  required  by  law  and 
other  due  proceedings  had,  obtain  a  patent  therefor. 
(Act  of  JulyS,  1870,  §24.) 

18.  INVENTIONS  FIRST  PATENTED  ABROAD  MAY  BE  PAT- 
ENTED  IN   THE   UNITED   STATES. — No  person   shall  be 
debarred  from  receiving  a  patent  for  his  invention  or 
discovery,  nor  shall  any  patent  be  declared  invalid  by 


SUBJECT-MATTER  OF  APPLICATION.  219 

reason  of  its  having  been  first  patented  or  caused  to  be 
patented  in  a  foreign  country,  provided  the  same  shall 
not  have  been  introduced  into  public  use  in  the  United 
States  for  more  than  two  years  prior  to  the  application, 
and  that  the  patent  shall  expire  at  the  same  time  with 
the  foreign  patent,  or,  if  there  be  more  than  one,  at  the 
same  time  with  the  one  having  the  shortest  term;  but 
in  no  case  shall  it  be  in  force  more  than  seventeen  years. 
(/&.,  §  25.) 

19.  AN  ABSTRACT  PRINCIPLE  NOT  PATENTABLE  UNLESS 
REDUCED  TO  PRACTICE. — A  discovery  of  some  new  princi- 
ple, theory,  or  elementary   truth,  abstracted  from  its 
application,  is  not  a  new  invention,  and  cannot  be  pro- 
tected by  a  patent.     To  entitle  himself  to  a  patent  the 
applicant  must  reduce  it  to  practice,  must  embody  it  in 
some  practical  machine  or  method  of  rendering  it  avail- 
able or  useful.    (  Whitney  v.  Emmett,  Bald.,  311 ;  Evans  y. 
Eaton,  Pet.  C.  <7.,  341,  342.) 

And  when  the  discovery  is  reduced  to  practice  by  any 
means,  old  or  new,  resulting  usefully,  it  is  patentable, 
independent  of  the  machinery  by  which  the  application 
is  made.  (Foote  v.  Silsby,  2  Blatchf.,  265.) 

20.  APPLICATION  OF  A  LAW  OF  NATURE. — He  who  first 
discovers  that  a  law  of  nature  can  be  applied,  and,  having 
devised  machinery  to  make  it  operative,  introduces  it  in 
practical  form  to  his  fellow-men,  is  the  inventor  not 
merely  of  the  mechanism,  but  of  the  force  which  oper- 
rates  through  the  mechanical  medium.     He  may  assert 
and  establish  his  property  not  only  in  the  formal  device 
for  which  mechanical  ingenuity  can  at  once,  as  soon  as  the 
principle  is  known,  imagine  a  thousand  substitutes,  but 
in  the  essential  principle  which  his  machine  was  the  first 


220  PROCEDURE  IN  THE  PATENT  OFFICE. 

to  embody  and  announce  to  mankind.    (Parker  v.  Hulme, 

1  Fish.,  44.) 

Thus,  where  a  patentee  claimed  the  application  of  the 
expansive  and  contractive  power  of  a  metallic  rod,  by 
different  degrees  of  heat,  to  open  and  close  a  damper 
which  governs  the  admission  of  air  into  a  stove,  it  was 
held,  that  it  was  a  valid  claim,  not  being  for  a  principle, 
and  that  the  patent  was  good.  (Silsby  v.  Foote,  20  How., 
385.) 

21.  A  PATENT  CAN  IN  NO  CASE  BE  FOR  AN  EFFECT  ONLY, 
but  for  an  effect  produced  in  a  given  manner  or  by  a 
peculiar  operation.  No  patent  can  be  obtained  for  the 
admeasurement  of  time  or  the  expansive  operations  of 
steam,  but  only  for  a  new  mode  or  new  application  of 
machinery  to  produce  these  effects;  and  therefore  if  new 
effects  are  produced  by  an  old  machine  in  its  unaltered 
state,  no  patent  can  be  legally  supported,  for  it  is  a  pat- 
ent for  an  effect  only.  (Whittemore  v.  Cutter,  1  Gall., 
480.) 

The  application  of  ether  to  surgical  purposes  was  an 
effect  produced  by  old  agents,  operating  by  old  means 
upon  old  subjects.  The  effect  alone  was  new,  and  was 
a  mere  discovery,  which,  however  novel  and  important, 
is  not  patentable.  (Morton  v.  New  York  Eye  Infirmary, 

2  Fish.,  320.) 

An  end  -to  be  accomplished  is  not  the  subject  of  a  pat- 
ent; only  the  new  and  useful  means  to  accomplish  it. 
(Carver  v.  Hyde,  16  Pet.,  519.) 

But  the  discovery  of  the  application  of  some  property 
in  nature  never  before  known  or  in  use,  by  which  is  pro- 
duced a  new  and  useful  result,  is  the  subject  of  a  patent, 
independently  of  any  peculiar  or  hew  arrangement  of 


SUBJECT-MATTER  OF  APPLICATION.  221 

machinery  for  the  purpose  of  applying  such  new  prop- 
erty. (Mote  v.  Sttsby,  2  Blatchf.,  264.) 

And  the  inventor  has  the  right  to  use  any  means,  new 
or  old,  in  the  application  of  the  new  property  to  produce 
the  new  and  useful  result,  to  the  exclusion  of  all  other 
means.  (Ib.} 

Where  a  result  is  in  a  greatly  improved  manufacture, 
it  may  become  the  test  of  invention,  and  from  which  in- 
vention may  be  inferred.  (Treadwell  v.  Fox,  MS.  Appeal 
Cases,  D.  C.,  1859.) 

22.  NEW  APPLICATION  ;  DOUBLE  USE. — The  application 
of  an  old  thing  to  a  new  purpose  is  not  patentable.  The 
thing  itself  which  is  patented  must  be  new,  and  not  a 
mere  application  of  it  to  a  new  purpose  or  object.  (Bean 
v.  Smallwood,  2  Story,  411.) 

The  inventor  of  a  machine  has  made  it  for  all  the 
uses  to  which  it  is  applicable,  and  no  one  can  obtain  a 
second  patent  for  the  machine  by  applying  it  to  a  new 
use.  ( Woodman  v.  Simpson,  3  Fish.,  98.) 

But  a  new  adaptation  and  arrangement  of  applying  and 
using  old  articles  for  a  certain  purpose — for  example, 
using  old  parts  of  a  caster  adapted  to  furniture  in  a  man- 
ner before  unknown — may  be  the  subject  of  letters  pat- 
ent, (Blake  v.  Sparry,  2  N.  Y.  Legal  Obs.,  251.) 

And  though  a  combination  of  machinery  is  not  new 
in  the  abstract,  yet  it  is  patentable  if  used  and  applied 
in  connection  with  the  practical  development  of  a  newly 
discovered  principle  producing^  new  and  useful  result. 
(Tatham  v.  LeEoy,  MS.  N.  Y.,  1849.) 

Where  the  principle  of  the  alleged  invention  has  been 
discovered  and  applied  before,  the  new  application  will 
19* 


222  PROCEDURE  IN  THE  PATENT  OEFICE. 

te  what  is  called  a  double  use.  (Blandy  ex  parte,  MS. 
Appeal  Cases,  D.  C.,  1858.) 

The  application  of  a  thing  already  known  to  a  new 
and  useful  purpose  may  be  the  subject  of  a  patent,  pro- 
vided the  new  use  is  not  analogous  to  the  old,  and  re- 
quires the  exercise  of  inventive  faculties.  ( Winans  v. 
Schenectady  and  Troy  Railroad,  2  Blatchf.,  293.) 

If  the  patentee  was  the  first  and  original  inventor  of 
the  application  and  use  of  plaster  of  Paris  to  the  filling 
of  fire-proof  safes,  and  this  application  produced  a  new 
and  useful  result,  it  cannot  be  doubted  that  it  is  a  proper 
subject  of  a  patent.  (Rich  .v.  Lippincott,  2  Fish.,  1.) 

An  invention  or  arrangement  of  parts,  though  already 
used  for  a  particular  purpose,  is  patentable,  if  in  the  new 
use  it  performs  any  new  function,  or  an  old  function  in 
a  better  manner,  or  makes  a  better  or  cheaper  manufac- 
ture. (Newman  ex  parte,  MS.  Appeal  Cases,  D.  C.,  1859.) 

The  substitution  of  a  jewel  in  place  of  glass  in  a  sew- 
ing machine  to  prevent  friction  in  the  passage  of  the 
thread  is  not  patentable;  it  is  but  the  double  use  of  an 
old  contrivance,  with  no  new  effect  or  result.  (Berry  ex 
parte,  MS.  Appeal  Cases,  D.  C.,  1859.) 

The  making  of  an  instrument  of  india  rubber  and 
silver,  if  a  useful  effect  is  secured  thereby,  may  be  the 
subject  of  a  patent,  though  such  article  may  have  before 
been  made  entirely  of  metal  and  also  entirely  of  rubber. 
Such  an  invention  is  not  a  double  use.  (Adams  ex  parte, 
MS.  Appeal  Cases,  D.  (7.,*  1860.) 

23.  MECHANICAL  EQUIVALENTS. — The  substitution  of  a 
known  mechanical  equivalent  is  not  an  invention  within 
the  patent  law.  (Blanchard's  Gun-Stock  Turning  Company 
v.  Warner,  1  Blatchf.,  278.) 


SUBJECT-MATTER  OF  APPLICATION.  223 

There  are  different  well-known  devices,  any  one  of 
which  may  be  adapted  to  effect  a  given  result,  according 
to  the  judgment  of  the  constructor.  The  mere  substi- 
tution of  one  of  these  for  another  does  not  belong  to 
the  subject  of  invention,  but  of  construction.  (Foster  v. 
Moore,  1  Curt.,  291.) 

By  equivalents  in  machinery  is  usually  meant  the  mere 
substitution  of  one  mechanical  power  for  another,  or  one 
obvious  and  customary  mode  for  another,  to  effect  a  like 
result.  (Smith  v.  Downing,  1  Fish.,  64.) 

The  term  "equivalents"  has  two  meanings,  as  used  in 
patent  cases.  The  one  relates  to  the  results  that  are  pro- 
duced, and  the  other  to  the  mechanism  by  which  these 
results  are  produced.  (Johnson  v.  Hoot,  1  Fish.,  352.) 

A  mechanical  equivalent,  as  generally  understood,  is 
when  one  thing  may  be  adopted  instead  of  another,  by  a 
person  skilled  in  the  art,  from  his  knowledge  of  the  art. 

(Ib.) 

By  an  "equivalent"  is  meant  something  that  does  the 
same  thing  in  substantially  the  same  way.  ( Cahoon  v. 
Ring,  1  Fish.,  397.) 

When  a  party  has  discovered  a  result,  as  well  as  the 
machinery  that  produces  it,  he  has  a  right  to  invoke  the 
doctrine  of  equivalents  in  reference  to  infringers.  (Singer 
v.  Walmsley,  ItFish.,  558.) 

But  where  he  is  only  the  original  inventor  of  a  device, 
he  can  only  recover  against  an  infriuger,  if  he  shows 
that  he  has  substantially  copied  his  invention.  In  other 
words,  being  an  improver  himself,  he  cannot  invoke  the 
doctrine  of  equivalents  to  help  him.  (/£>.) 

"Where  a  patent  is  granted  for  a  composition  made  of 
several  ingredients,  it  covers  and  embraces  known  equiv- 


224  PROCEDURE  IN  THE  PATENT  OFFICE. 

alents  of  each  of  the  ingredients.  (Matthews  v.  Skates,  1 
Fish.,  602.) 

An  equivalent  of  any  substance  is  another  substance 
having  similar  properties  and  producing  substantially  the 
same  effect.  (Ib.} 

An  equivalent  device  is  such  as  a  mechanic  of  or- 
dinary skill  in  the  construction  of  similar  machinery, 
having  the  plaintiff's  specification  and  machine  before 
him,  could  substitute  in  the  place  of  the  mechanism  de- 
scribed, and  without  the  exercise  of  the  inventive  facul- 
ties. (Burden  v.  Corning,  2  Fish.,  477.) 

In  the  case  of  Foster  v.  Moore,  Mr.  Justice  Curtis 
charged  the  jury  as  follows:  "The  term  'equivalent,' 
gentlemen,  has  two  meanings,  as  used  in  this  class  of 
cases.  The  one  relates  to  the  results  that  are  produced, 
and  the  other  to  the  mechanism  by  which  those  results 
are  produced.  Two  things  may  be  equivalent,  that  is, 
the  one  equivalent  to  the  other,  as  producing  the  same 
result,  when  they  are  not  the  same  mechanical  means. 
Mechanical  equivalents  are  spoken  of  as  different  from 
equivalents  that  produce  the  same  result.  A  mechanical 
equivalent,  I  suppose,  as  generally  understood,  is  where 
the  one  may  be  adopted  instead  of  the  other,  by  a  person 
skilled  in  the  art,  from  his  knowledge  of  the  art.  Thus 
an  instrumentality  is  used  as  a  mechanism.  You  wish 
to  produce  a  pressure  downward;  well,  it  can  be  done 
by  a  spring  or  it  can  be  done  by  a  weight.  A  machine 
is  presented  to  a  person  conversant  with  machines.  He 
sees  that  the  farce  applied  downward  in  the  one  before 
him  is  by  weight;  from  a  knowledge  of  his  art  he  can 
pass  at  once  to  another  force — the  spring  to  press  it 
downward;  and  these  are  mechanical  equivalents.  But, 


SUBJECT-MATTER  OF  APPLICATION.  225 

gentlemen,  there  may  be  equivalents  in  producing  the 
same  results,  each  of  which  is  an  independent  matter  of 
invention,  and  in  that  sense  they  are  not  mechanical 
equivalents.  To  illustrate  my  meaning,  suppose  in  early 
days  the  problem  was  to  get  water  from  a  well  to  the 
surface  of  the  earth :  one  man  takes  a  rope  made  of 
grass  and  draws  up  a  pail  of  water;  another  would  see 
that,  as  a  mechanical  equivalent,  a  rope  of  hemp  would 
accomplish  the  same  result.  But  suppose  that  another 
person  comes  and  for  the  first  time  invents  a  pump: 
that  is  equivalent  in  the  result  to  bringing  the  water  to 
the  surface  of  the  ground;  in  that  respect  it  is  equiva- 
lent, as  producing  that  result,  to  hauling  it  up  by  a  rope, 
but  it  is  not  mechanically  equivalent;  it  brings  into  op- 
eration, as  you  know,  different  powers  and  forces,  and 
would  require  invention  to  introduce  it.  (1  Curtis  C.  (7., 
279.) 

24.  MECHANICAL  SKILL. — There  must  be  embodied  in 
the  invention,  over  and  beyond  the  skill  of  the  mechanic, 
that  inventive  element  of  the  mind  which  is  to  be  found 
in  every  invention  that  is  the  proper  subject  of  a  patent. 
(Tatham  v.  Le  Roy,  2  Blatchf.,  488.) 

Mere  mechanical  skill  can  never  rise  to  the  sphere  of 
invention.  The  latter  involves  higher  thought  and 
brings  into  activity  a  different  facul  ty.  Their  domains 
are  distinct.  The  line  which  separates  them  is  some- 
times difficult  to  trace;  nevertheless,  in  the  eye  of  the 
law,  it  always  subsists.  (Blandy  v.  Griffith,  3  Fish.,  609.) 

It  is  difficult  to  determine  where  ordinary  mechanical 
skill  ends  and  invention  begins.  The  best  practical  prin- 
ciple is,  that  where  the  combination  of  known  elements 
produces  new  and  useful  results  to  the  public  not  before 
15 


226  PROCEDURE  IN  THE  PATENT  OFFICE. 

attained,  then  the  person  who  discovers  and  applies  the 
combination  is  an  inventor,  within  the  true  intent  and 
meaning  of  the  patent  law.  (Smith  ex  parte,  MS.  Ap- 
peal Cases,  D.  C.,  1860.) 

25.  DISCOVERY. — Discovery  is  synonymous  with  inven- 
tion, under  the  Constitution  and  laws  of  the  United 
States  respecting  patents.  (Kemper  ex  parte,  MS.  Ap- 
peal Cases,  D.  C.,  1841.) 

A  patent  cannot  be  granted  for  the  discovery  of  a  fact 
which  long  before  existed;  there  is  no  invention,  nothing 
contrived  or  produced.  (-Z7>.) 

In  its  naked  and  ordinary  sense  a  discovery  is  not 
patentable.  It  is  only  when  the  explorer  has  gone  be- 
yond the  mere  domain  of  discovery,  and  has  laid  hold  of 
the  new  principle,  force,  or  law,  and  connected  it  with 
some  particular  medium  or  mechanical  contrivance,  by 
which,  or  through  which,  it  acts  on  the  material  world, 
that  he  can  secure  the  exclusive  control  of  it  under  the 
patent  laws.  He  then  controls  the  discovery  through 
the  means  by  which  he  has  brought  it  into  practical  ac- 
tion, or  their  equivalent,  and  it  is  then  an  invention, 
although  it  embraces  a  discovery.  (Morton  v.  New  York 
Eye  Infirmary,  2  Fish.,  320.) 

A  discovery  may  be  the  soul  of  an  invention,  but  it 
cannot  be  the  subject  of  the  exclusive  control  of  the  pat- 
entee,  or  the  patent  law,  until  it  inhabits  a  body,  no 
more  than  can  a  disembodied  spirit  be  subjected  to  the 
control  of  human  law.  (Ib.) 

He  who  has  discovered  some  new  element  or  property 
of  matter  may  secure  to  himself  the  ownership  of  his 
discovery,  but  the  mental  conception  must  have  been 
embodied  in  some  mechanical  device  or  some  process 


SUBJECT-MATTER  OF  APPLICATION.  227 

of  art.  The  patent  must  be  for  a  thing,  not  for  an  idea 
merely.  ( Vide  supra,  p.  219;  Detmold  v.  Reeves,  1  Fish., 
127.) 

The  discovery  of  a  fact,  that  a  given  natural  substance 
will,  in  appropriate  methods  of  administration,  produce 
a  particular  physiological  or  pathological  effect  on  the 
human  body,  is  not  a  thing  patentable  under  any  existing 
statute.  (Morton's  Anaesthetic  Patent,  8  Opinions  Attorneys 
General,  272.) 

A  new  process  is  generally  the  result  of  discovery — a 
machine  of  invention.  ( Corning  v.  Burden,  15  How.,  267.) 

26.  NOVELTY. — As  to  the  novelty  of  the  invention,  the 
rule  is  that  it  must  be  new  as  to  all  the  world;  not  the 
abstract  discovery, but  the  thing  invented;  not  the  new 
secret  principle,  but  the  manufacture  resulting  from  it. 
(  Whitney  v.  Emmett,  Bald.,  309.) 

The  thing  itself  which  is  patented  must  be  new,  not 
merely  the  purpose  to  which  it  is  applied.  (Bean  v. 
Sinallwood,  2  Story,  411.) 

The  question  is  whether  the  thing  has  been  known 
before.  In  case  of  a  machine,  whether  it  has  been  sub- 
stantially constructed  before ;  in  case  of  an  improvement 
of  a  machine,  whether  that  improvement  has  ever  been 
applied  to  such  a  machine  before,  or  whether  it  is  sub- 
stantially a  new  combination.  (Eark  v.  Sawyer,  4  Mason, 
6,7.) 

The  question  is  not  whether  the  invention  is  better  or 
worse  than  its  predecessor,  but  whether  it  is  new  and 
useful,  and  different  from  anything  before  used  or  known. 
(Blandy  v.  Griffith,  3  Fish.,  609.) 

The  law  does  not  require  any  degree  of  utility ;  it  does 
not  exact  that  the  subject  of  the  patent  shall  be  better 


228  PROCEDURE  IN  THE  PATENT  OFFICE. 

than  anything  invented  before  or  that  shall  come  after. 
(Hoffhdm  v.  Brandt,  3  Fish.,  218.) 

A  novelty  in  principle  may  consist  in  a  new  and  val- 
uable mode  of  applying  an  old  power,  effecting  it  not 
merely  by  a  new  instrument  or  form  of  the  machine,  or 
any  mere  equivalent,  but  by  something  giving  it  a  new 
or  greater  advantage.  (Hovey  v.  Stevens,  1  Wood  $•  Min., 
290.) 

In  the  allowance  of  a  patent  the  question  of  novelty 
should  not  be  too  rigorously  questioned,  but  the  benefit 
of  any  doubt  should  be  given  to  the  applicant,  as,  if  his 
application  is  rejected  and  his  invention  have  real  pat- 
entable  novelty,  irremediable  injury  would  be  produced; 
but  if  the  patent  is  allowed,  the  novelty  can  still  be  in- 
quired into  by  a  jury.  (Cole  ex  parte,  MS.  Appeal  Cases, 
D.  C.,  1857.) 

It  was  formerly  necessary  among  us,  as  in  England, 
that  the  whole  of  the  improvements  claimed  as  such 
should  be  new,  and  if  the  novelty  of  any  one  of  them 
failed,  though  it  might  not  be  one  used  by  the  defend- 
ant, an  action  could  not  be  sustained.  But  the  law  now 
provides  (ut  supra,  p.  27,  §  60)  that  the  patent  shall  be 
deemed  good  and  valid  for  so  much  of  the  invention  or 
discovery  as  shall  be  truly  and  bona  fide  the  invention  or 
discovery  of  the  patentee,  if  it  is  a  material  and  substan- 
tial part  of  the  thing  patented,  and  definitely  distinguished 
from  the  other  parts  which  the  patentee  had  no  right  to 
claim,  notwithstanding  the  specification  may  be  too  broad, 
if  it  was  so  made  without  willful  default.  ( Curtis  on  Pat- 
ents, §  334.) 

27.  PRESUMPTIONS  OF  NOVELTY. — Presumptions  of  the 
novelty  of  a  patented  invention  may  arise  from  some  or 


SUBJECT-MATTER  OF  APPLICATION.  229 

all  of  the  following  grounds:  1.  The  oath  of  the  pat- 
entee that  he  was  the  first  and  original  inventor;  2.  The 
action  of  the  Patent  Office  in  granting  the  patent  after 
full  examination;  3.  Undisturbed  enjoyment  of  all  the 
benefits  of  the  exclusive  rights  granted  by  the  patent; 
4.  Direct  adjudications,  either  at  law  or  in  equity,  estab- 
lishing the  validity  of  the  patent;  5.  Injunctions  granted 
to  restrain  infringement  of  the  patent.  (Hussey  v. 
Whitely,  2  Fish.,  120.) 

28.  UTILITY. — The  word  useful  is  used  in  contradis- 
tinction to  mischievous  or  immoral.  All  that  the  law 
requires  is  that  the  invention  should  not  be  frivolous  or 
injurious  to  the  well-being,  good  policy,  or  sound  morals 
of  society.  Whether  the  invention  is  more  or  less  use- 
ful is  a  circumstance  of  no  importance  to  the  public.  It 
is  sufficient  if  the  invention  has  any  utility.  (Lowell  v. 
Lewis,  1  Mason,  186 ;  Kneas  v.  Schuylkill .Bank, 4  Wash.,  12.) 

The  degree  of  the  utility  of  an  invention  is  not  a  sub- 
ject for  consideration  in  determining  whether  an  inven- 
tion is  patentable.  (Seely  ex  parte,  MS.  Appeal  Cases,  D. 
C.,  1853.) 

It  is  the  duty  of  the  Commissioner  to  grant  a  patent, 
if  in  his  opinion  the  thing  is  sufficiently  useful  and  im- 
portant. But  the  degree  of  usefulness  or  importance  is 
not  described  or  limited  by  the  statute ;  nor  is  it  mate- 
rial if  the  matter  interferes  with  no  prior  right  or  claim 
and  is  in  itself  innocent.  If  good  may  be  the  result  of 
granting  a  patent  and  evil  cannot,  it  ought  to  be  granted. 
(Aiken  ex  parte,  MS.  Appeal  Cases,  D.  (7.,  1850.) 

But  the  invention  must  be,  in  some  small  measure  at 
least,  beneficial  to  the  community.  An  invention  for 
folding  thread  or  cotton  in  a  more  ornamental  manner, 
20 


230  PROCEDURE  IN  THE  PATENT  OFFICE, 

by  which  the  article  would  sell  quicker  and  at  a  higher 
price,  but  which  made  no  change  in  the  article,  is  not  a 
useful  invention  within  the  patent  laws,  although  useful 
to  the  patentee.  (Langdon  v.  De  Groot,  1  Paine.,  204,  206.) 

The  presumption  on  the  face  of  a  patent  is  that  it  is 
of  some  utility,  for  the  applicant  is  obliged  to  swear  that 
the  invention  is  useful  before  he  can  secure  a  patent. 
(Coleman  v.  Liesor,  MS.,  Ohio,  1859.) 

29.  HARMFUL  INVENTIONS  NOT  PATENTABLE. — In  the 
case  of  George  B.  Morris  and  Samuel  Watson  ex  parte 
the  Commissioner  says :  Applicants  described  in  their 
original  specification  what  they  called  "  a  new  process 
for  making  butter,  to  be  used  in  place  of  ordinary  but- 
ter." They  say,  "the  nature  of  our  invention  consists 
in  preparing  ordinary  butter,  and  combining  it  with  milk 
and  other  ingredients,  whereby  it  is  increased  in  bulk 
and  weight."  Again  they  say,  "  to  prepare  the  Western 
Dairy  Butter  take  say  about  ten  pounds  of  ordinary  but- 
ter, and  wash  the  same  as  cold  as  it  can  be  worked  in 
clear  lime  water,  in  which  about  four  ounces  of  lime  to 
the  gallon  of  water  have  been  dissolved,"  &c.  They  next 
warm  the  butter,  and  mix  it  with  sweet  milk  and  flour 
into  a  paste.  They  then  color  it  with  eggs,  carrots,  or 
anotta  and  tumeric,  until  at  length  the  precious  mess 
produces  "  about  eighteen  pounds  of  good  solid  butter, 
which  may  be  printed  in  cakes  or  made  into  rolls  or 
packed."  Subsequently  applicants  amended  this  appli- 
cation, by  changing  the  title  to  a  process  for  making 
"A  Substitute  for  Butter;"  but  the  remainder  of  the 
specification,  the  process  itself,  the  title  of  "Western 
Dairy  Butter,"  and  the  statement  of  the  nature  of  the 
invention,  remain  unchanged. 


SUBJECT-MATTER  OF  APPLICATION.  231 

This  application  was  rejected  by  the  primary  examiner, 
but  was  allowed  by  a  majority  of  the  board  of  examiners- 
in-chief  on  appeal.  The  examiner  now  presents  the  mat- 
ter for  the  judgment  of  the  Commissioner  in  person. 

Fortunately  the  law  vests  the  Commissioner  with  ample 
powers  to  protect  the  public  against  the  advertisement  of 
such  mixtures  under  the  sanction  of  this  office. 

Section  31,  act  of  July  8,  1870,  provides  that  "  the 
Commissioner  shall  cause  an  examination  to  be  made  of 
the  alleged  new  invention  or  discovery;  and  if  on  such 
examination  it  shall  appear  that  the  claimant  is  justly 
entitled  to  a  patent  under  the  law,  and  that  the  same  is 
sufficiently  useful  and  important,  the  Commissioner  shall 
issue  a  patent  therefor." 

In  the  opinion  of  the  Commissioner,  this  invention, 
whether  regarded  as  a  new  process  of  making  butter, 
which  it  is  not,  or  as  "  a  new  process  for  making  a  sub- 
stitute for  butter,"  is  not  sufficiently  useful  or  important 
to  warrant  the  grant  of  letters  patent  for  it.  (Commis- 
sioner's Decision,  July  23,  1870.) 

The  feasi  lity  of  an  invention  in  point  of  expense  is 
not  for  the  office  to  consider ;  nor  will  an  invention  be 
condemned  on  the  ground  that  it  is  too  costly  for  use. 
(li.  A.  Cheesborough  ex  parte,  Commissioner's  Decisions, 
1859,  p.  18.) 

30.  ART. — In  order  to  make  a  new  process  or  method 
of  working,  or  of  producing  an  effect  or  result  in  matter 
a  subject  of  a  patent  in  England,  a  somewhat  liberal  con- 
struction of  the  ter"m  "manufacture"  became  necessary, 
by  which  an  improvement  in  the  art  or  process  of  mak- 
ing or  doing  a  thing  was  made  constructively  to  be  rep- 
resented by  the  term  which,  ordinarily,  would  mean  only 


232  PROCEDURE  IN  THE  PATENT  OFFICE. 

the  thing  itself,  when  made  or  done.  It  was,  doubtless, 
to  avoid  the  necessity  for  this  kind  of  construction  that 
the  framers  of  our  legislation  selected  a  term  which,  pro- 
prio  vigore,  would  embrace  those  inventions  where  the 
particular  machinery  or  apparatus,  or  the  particular  sub- 
stance employed,  would  not  constitute  the  discovery,  so 
much  as  a  newly-invented  mode  or  process  of  applying 
them,  in  respect  to  the  order,  or  position,  or  relations  in 
which  they  are  used.  Thus,  for  example,  in  the  art  of 
dyeing  or  tanning,  it  is  obvious  that  an  old  article  of 
manufacture  may  be  produced  by  the  use  of  old  mate- 
rials, but  produced  by  the  application  of  those  materials 
in  new  relations.  In  such  cases  it  might  not  be  practi- 
cable to  claim  the  article  itself,  when  made,  as  a  new 
manufacture,  for  it  might,  as  an  article  of  commerce  or 
consumption,  differ  in  no  appreciable  way  from  the  same 
kind  of  article  produced  by  the  old  and  well-known 
method;  at  the  same  time  the  new  method  of  producing 
the  article  might  be  a  great  improvement,  introducing 
greater  cheapness,  rapidity,  or  simplicity  in  the  process 
itself.  Again,  other  cases  may  be  supposed,  where  the 
manufacture  itself,  as  produced  by  a  new  process,  would 
be  better  than  the  same  manufacture  produced  by  the 
old  process,  as  in  the  different  modes  of  making  iron 
from  the  native  ore;  and  yet  the  really  new  discovery  in 
such  cases  could  not  well  be  described  as  a  new  "manu- 
facture" or  a  new  "composition  of  matter,"  without  a 
figurative  use  of  those  terms,  which  it  is  desirable  to 
avoid.  This  difficulty  is  avoided  by  the  use  of  the  term 
"art,"  which  was  intended  to  embrace  those  inventions 
where  the  particular  apparatus  or  materials  employed 
may  not  be  the  essence  of  the  discovery,  but  where  that 


SUBJECT-MATTER  OF  APPLICATION.  233 

essence  consists  in  using  apparatus  or  materials  in  new 
processes,  methods,  or  relations,  so  as  to  constitute  a  new 
mode  of  attaining  an  old  result,  or  a  mode'of  attaining 
a  new  result,  in  a  particular  department  of  industry, 
which  result  may  not  of  itself  be  any  new  machine,  man- 
ufacture, or  composition  of  matter;  or,  finally,  an  entirely 
new  process  of  making  or  doing  something  which  has 
not  been  made  or  done  before  by  an  old  process.  (Cur- 
tis on  Patents,  §  9.) 

The  patent  may  be  for  a  new  and  useful  art,  but  it 
must  be  practical;  it  must  be  applicable  and  referable 
to  something  which  may  prove  it  to  be  useful.  A  mere 
abstract  principle  is  unsusceptible  of  appropriation  by 
patent.  ( Vide  supra,  p.  219,  §  19.) 

The  applicant  for  a  patent  must  show  how  the  princi- 
ple is  to  be  used  and  applied  to  some  useful  purpose. 
(Ecans  v.  Eaton,  1  Pet.  C.  G,  341.) 

Art,  as  the  subject  of  a  patent,  is  not  art  in  the  ab- 
stract, without  a  specification  of  the  manner  in  which  it 
is  to  operate  as  a  manufacture  or  otherwise,  but  it  is  the 
art  explained  in  the  specification,  and  illustrated  by  a 
machine  or  model  or  drawing.  It  is  the  art  so  repre- 
sented or  exemplified,  like  the  principle  thus  embodied, 
which  alone  the  patent  laws  are  designed  to  protect.  In 
the  English  patent  acts  the  word  art  is  not  used  at  all. 
(Smith  v.  Downing,  1  Fish.,  64.) 

The  word  art  means  a  useful  art  or  a  manufacture 
which  is  beneficial,  which  is  required  to  be  described 
with  exactness  in  its  mode  of  operation,  and  which  can 
be  protected  only  in  the  mode  used  to  the  extent  thus 
described.  (/6.) 

An  art  is  entitled  to  protection  as  well  as  the  machin- 
20* 


234  PROCEDURE  IN  THE  PATENT  OFFICE. 

ery  or  process  which  the  art  teaches,  employs,  or  makes 
useful.  (Ifreneh  v.  Rogers,  1  Fish.,  133.) 

A  patent  for  "  an  improvement  in  the  art  of  making 
nails,  by  means  of  a  machine  which  cuts  and  heads  the 
nail  at  one  operation,"  is  not  a  grant  of  an  abstract  prin- 
ciple, nor  is  it  a  grant  of  the  different  parts  of  any  ma- 
chine, but  an  improvement  applied  to  a  practical  use 
effected  by  a  combination  of  various  mechanical  parts  to 
produce  a  new  result.  (Gray  v.  James,  Pet.  C.  C.,  400, 
401.) 

An  improvement  in  an  art,  as  of  casting  iron  by  giv- 
ing an  angular  direction  to  the  tube  which  conducts  the 
metal  to  the  mold,  so  that  the  flog  or  drop  will  be  thrown 
into  the  center  instead  of  the  surface,  is  patentable. 
(McClurg  v.  Kingsland,  1  How.,  209,  210.) 

A  mode  or  tabular,  form  of  keeping  mercantile  ac- 
counts, whereby  a  balance  sheet  and  statement  of  assets 
is  constantly  shown,  is  not  an  invention  of  an  art,  ma- 
chine, or  composition  of  matter,  and  is  not  patentable. 
(Dixon  ex  parte,  MS.  Appeal  Cases,  D.  C.,  1860.) 

31.  PROCESS. — A  process  eo  nomine  is  not  the  subject 
of  a  patent  under  our  laws,  but  it  is  included  under  the 
general  term  "useful  art,"  and  an  art  may  require  one 
or  more  processes  or  machines  in  order  to  produce  a 
certain  result  or  manufacture.  (Corning  v.  Burden,  15 
How.,  252.) 

Where  the  result  or  effect  is  produced  by  chemical 
action,  by  the  operation  or  application  of  some  element 
or  power  of  nature,  or  of  one  substance  to  another,  such 
modes,  methods,  or  operations  are  called  "processes." 
The  arts  of  tanning,  dyeing,  making  water-proof  cloth, 
vulcanizing  india  rubber,  smelting  ores,  &c.,  are  usually 


SUBJECT-MATTER  OF  APPLICATION.  235 

carried  on  by  "  processes,"  as  distinguished  from  machines. 
One  person  may  discover  an  improvement  in  a  process, 
irrespective  of  any  particular  form  of  machinery,  and 
another  may  invent  a  labor-saving  machine  by  which 
the  operation  or  process  may  be  performed,  and  each 
may  be  entitled  to  a  patent — the  first,  for  a  process,  but 
not  for  a  machine;  the  second,  for  a  machine,  but  not 
for  a  process.  It  is  when  the  term  "process"  is  used  to 
represent  some  means  or  method  of  producing  a  result, 
that  a  process  is  patentable,  and  thus  used  the  term  in- 
cludes all  means  which  are  not  effected  by  mechanism  or 
mechanical  combinations.  (lb.) 

A  principle,  so  far  embodied  and  connected  with  cor- 
poreal substances  as  to  be  in  a  condition  to  act  and  to 
produce  effects  in  any  art,  trade,  mystery,  or  manual  oc- 
cupation, becomes  the  practical  manner  of  doing  a  par- 
ticular thing.  It  is  no  longer  a  principle,  but  a  pro- 
cess. Mr.  Watts's  invention  was  the  discovery  of  a 
practical  means  of  lessening  the  consumption  of  steam, 
by  protecting  the  cylinder  from  the  external  air,  and 
keeping  it  at  a  temperature  not  below  that  of  steam  it- 
self. He  thus  brought  a  principle  into  practical  applica- 
tion, by  the  invention  of  a  process  carried  on  by  a  newly- 
contrived  machine.  (Curtis  on  Patents,  §  5.) 

The  application  of  an  old  process  to  the  manufac- 
ture of  an  article  to  which  it  had  never  been  before 
applied  is  not  patentable.  (How  v.  Abbot,  2  Story,  190, 
1842.) 

The  inventor  is  entitled  to  separate  claims  for  the  pro- 
cess and  the  product  which  it  produces;  and  while  such 
claims  may  properly  be  embraced  in  one  patent,  it  is  a 
matter  within  the  discretion  of  the  Commissioner  so  to 


236  PROCEDURE  IN  THE  PATENT  OFFICE. 

include  them,  or  to  issue  separate  patents  for  each.  (Good- 
year v.  Wait,  3  Fish.,  242.) 

If  the  patentee  be  the  inventor  of  a  new  composition 
of  matter,  not  known  or  used  by  others  before  his  dis- 
covery, his  sole  right  to  use,  and  vend  to  others  to  be 
used,  is  the  new  composition  or  substance  itself.  The 
product  and  process  constitute  one  discovery.  (Goodyear 
v.  The  Railroads,  2  Wall.,  jr.,  360.) 

Where  the  specification  showed  that  the  invention  was 
not  merely  an  improved  method  or  process,  but  a  new 
product,  fabric,  or  manufacture,  held,  that  the  patentee 
had  a  right  to  prohibit  the  sale  or  use  of  the  composi- 
tion, as  the  product  and  process  both  were  new.  (fb.) 

32.  MACHINE. — Machines  may  be  regarded  merely  as 
devices,  by  the  instrumentality  of  which  the  laws  of  na- 
ture are  made  applicable  and  operative  to  a  particular  re- 
sult. (Parker  v.  Hulme,  1  Fish.,  50.) 

A  machine  is  rightfully  the  subject  of  a  patent  when- 
ever a  new  or  an  old  effect  is  produced  by  mechanism 
new  in  its  combinations,  arrangements,  or  mode  of  oper- 
ation. 

If  the  subject  of  the  invention  or  discovery  is  not  a 
mere  function,  but  a  function  embodied  in  some. partic- 
ular mechanism,  whose  mode  of  operation  and  general 
structure  are  pointed  out,  and  which  is  designed  to  ac- 
complish a  particular  purpose,  function,  or  effect,  it  will 
be  a  machine,  in  the  sense  of  the  patent  law.  A  ma- 
chine is  rightfully  the  subject  of  a  patent  when  well- 
known  effects  are  produced  by  machinery  entirely  new 
in  all  its  combinations,  or  when  a  new  or  an  old  effect  is 
produced  by  mechanism  of  which  the  principle  or  modus 
operandi  is  new.  The  word  "  machine "  in  the  statute 


SUBJECT-MATTER  OF  APPLICATION.  237 

includes  new  combinations  of  machines,  as  well  as  new 
organizations  of  mechanism  for  a  single  purpose.  There 
may  be  a  patent  for  a  new  combination  of  machines  to 
produce  certain  effects,  whether  the  machines  constitut- 
ing the  combination  be  new  or  old.  In  such  cases  the 
thing  patented  is  not  the  separate  machines,  but  the 
combinations.  A  single  instance  of  such  a  combination 
is  presented  by  the  telescope,  in  which  a  convex  and 
concave  glass  of  different  refracting  powers  are  com- 
bined to  make  the  object-glass.  (Curtis  on  Patents,  §  21.) 

The  word  "  machine"  in  the  statute  includes  new  com- 
binations as  well  as  new  organizations  of  mechanism,  and 
hence  there  may  be  a  patent  for  new  combinations  of 
machinery  to  produce  certain  effects,  whether  the  ma- 
chines constituting  the  combination  be  new  or  old. 
( Wintermute  v.  Redington,  1  Fish.,  240.) 

Invention,  as  respects  machines,  is  any  new  arrange- 
ment or  combination  of  machinery,  whether  of  old  or 
new  parts  or  materials,  producing  a  useful  result.  (Mc- 
Cormick  v.  Seymour,  MS.,  N.  Y.,  1857.) 

A  machine  may  be  new,  and  the  product  or  manufac- 
ture proceeding  from  it  may  be  old.  In  that  case  the 
former  would  be  patentable,  and  the  latter  not.  The 
machine  may  be  substantially  old  and  the  product  new. 
In  that  event  the  latter,  and  not  the  former,  would  be 
patentable.  Both  may  be  new,  or  both  may  be  old.  In 
the  former  case,  both  would  be  patentable;  in  the  latter, 
neither.  The  same  remarks  apply  to  processes  and  their 
results.  Patentability  may  exist  as  to  either,  neither,  or 
both,  according  to  the  fact  of  novelty,  or  the  opposite. 
The  patentability,  or  the  issuing  of  a  patent  as  to  one,  in 
nowise  affects  the  rights  of  the  inventor  or  discover  in 


238  PROCEDURE  IN  THE  PATENT  OFFICE. 

respect  to  the  other.  They  are  wholly  disconnected  and 
independent  facts.  (Rubber  Company  v.  Goodyear ,  9  Wal- 
lace, 796.) ' 

33.  INVENTIONS  PERTAINING  TO  MACHINES  MAY  BE  DI- 
VIDED INTO  FOUR  CLASSES. — 1.  Where  the  invention  em- 
braces the  entire  machine.     Under  such  a  patent,  the 
patentee  holds  the  exclusive  right  to  make  and  use,  and 
vend  to  others  to  be  used,  the  entire  machine;  and  if 
another,  without  license,  makes,  uses,  or  vends  any  por- 
tion of  it,  he  invades  the  right  of  the  patentee. 

2.  Those  which  embrace  one  or  more  elements  of  a 
machine.     In  patents  of  this  class  any  person  may  make, 
use,  or  vend  all  other  parts  of  a  machine,  and  he  may 
employ  the  same  part  or  element  of  a  machine,  provided 
it  be  substantially  different  from  that  embraced  in  the 
patent. 

3.  Those  which  embrace  both  a  new  element  and  a 
new  combination  of  elements  previously  used  and  well 
known.     The  property  of  the  patentee  in  such  a  case 
consists  in  the  new  element  and  the  new  combination. 

4.  Those  where  all  the  elements  of  the  machine  are 
old,  and  where  the  invention  consists  in  a  new  combina- 
tion of  those  elements,  whereby  a  new  and  useful  result 
is  obtained. 

Most  of  the  modern  inventions  are  of  this  latter  kind, 
and  many  of  them  are  of  great  utility  and  value.  ( Union 
Sugar  Refinery  v.  Matthiessen,  2  Fish.,  600.) 

34.  FORM,  (vide  supra,  p.  225.) — A  mere  change  of  the 
form  or  proportions  of  any  machine  cannot,  per  se,  be 
deemed  a  new  invention.     (Lowell  v.  Lewis,  Mason,  190.) 

There  must  be  a  substantial  difference  in  the  principle, 
and  the  application  of  it,  to  constitute  such  an  improve- 


SUBJECT-MATTER  OF  APPLICATION.  239 

ment  as  the  law  will  protect.  (Smith  v.  Pearce,  2  McLean, 
178.) 

But  if  by  changing  the  form  and  proportion  a  new 
effect  is  produced,  there  is  not  simply  a  change  of  form 
and  proportion,  but  a  change  of  principle  also.  (Davis 
v.  Palmer,  2  Brock.,  310.) 

If  an  improvement  in  form  and  structure  enables  the 
operator  to  do  the  work  in  a  better  manner,  or  with  more 
ease,  or  less  expense,  or  in  less  time,  it  is  a  patentable 
improvement.  (Bain  v.  Morse,  MS.  Appeal  Cases,  D.  C., 
1849.) 

35.  MANUFACTURE. — The  term  "manufacture"  was 
used  in  the  English  statute  (21  Jac.  I)  to  denote  any- 
thing made  by  the  hand  of  man ;  so  that  it  embraces,  in 
the  English  law,  machinery  as  well  as  substances  or  fab- 
rics produced  by  art  and  industry.  It  came  by  construc- 
tion to  include  the  process  of  making  a  thing,  or  the  art 
of  carry  ing  on  a  manufacture;  so  that  all  the  various  ob- 
jects which  are  now  held  in  England  to  be  the  subjects 
of  letters  patent  are  included  under  this  term,  which  alone 
saves  them  out  of  the  prohibition  of  the  statute  of  mo- 
nopolies. 

Our  statute,  however,  having  made  an  enumeration  of 
the  different  classes  of  subjects  which  in  England  are 
held  to  be  patentable,  it  is  to  be  presumed  that  this  term 
was  used  to  describe  one  of  these  classes  only,  namely, 
fabrics  or  substances  made  by  the  art  or  industry  of  man, 
not  being  machinery.  It  may  sometimes  require  a  nice 
discrimination  to  determine  whether  one  of  these  classes 
does  not  run  into  the  other  in  a  given  case :  as,  for  in- 
stance, when  a  tool  or  instrument  of  a  novel  or  improved 
construction  is  produced,  to  be  used  in  connection  with 


240  PROCEDURE  IN  THE  PATENT  OFFICE. 

other  machinery  or  to  be  used  separately.  As  an  article 
of  merchandise,  found  and  sold  separately  in  the  market, 
such  a  production  would  he  a  manufacture;  hut,  regarded 
with  reference  to  its  use  and  intended  adaptation,  it  might 
he  considered  as  a  machine  or  part  of  a  machine.  In  de- 
termining in  such  cases  how  the  patent  for  the  article 
should  he  claimed,  it  would  probably  he  correct  to  range 
it  under  the  one  or  the  other  of  these  classes,  according 
to  the  following  test:  if  the  article  is  produced  and  in- 
tended to  be  sold  and  used  separately  as  a  merchantable 
commodity,  and  the  merit  of  it  as  an  invention  consists 
in  its  being  a  better  article  than  had  been  before  known, 
or  in  its  being  produced  by  a  cheaper  process,  then  it 
may  properly  be  considered  simply  as  a  manufacture; 
but  if  its  merit  appears  only  after  its  incorporation  with 
some  mechanism  with  which  it  is  to  be  used,  and  con- 
sists in  producing,  when  combined  with  such  mechanism, 
a  new  effect,  then  it  should  be  regarded  as  a  machine, 
or  an  improvement  of  an  existing  machine. 

The  fact  that  a  result  is  a  new  and  valuable  article 
of  manufacture  affords  ground  to  presume  invention. 
( Woodruff  ex  parte,  MS.  Appeal  Cases,  D.  C.,  1859.) 

A  new  manufacture,  as  the  use  of  a  new  composi- 
tion, which  results  in  a  new  and  useful  article,  is  the 
proper  subject  of  a  patent,  though  the  means  employed 
to  adapt  the  new  composition  to  a  useful  purpose  are 
old  and  well  known.  (Hotchkiss  v.  Greenwood,  11  How., 
265.) 

There  is  a  wide  difference  between  the  invention  of  a 
new  method  or  process,  by  which  a  known  fabric,  pro- 
duct, or  manufacture  is  produced  in  a  better  and  cheaper 
way,  and  the  discovery  of  a  new  compound,  substance, 


SUBJECT-MATTER  OF  APPLICATION.  241 

or  manufacture,  having  qualities  never  found  to  exist 
together  in  any  other  material. 

In  the  first  case,  the  inventor  can  patent  nothing  but 
his  process.;  in  the  latter,  both  the  process  and  composi- 
tion of  matter  are  patentable.  (Goodyear  v.  The  Rail- 
roads, 2  Wall,  jr.,  360.) 

Where  the  result  or  effect  is  a  greatly-improved  article 
of  manufacture,  it  may  become  the  test  from  which  in- 
vention may  be  inferred.  ( Treadwell  v.  Fox,  MS.  Appeal 
Cases,  D.  C,  1859.) 

Where  the  claim  was  for  a  particular  method  of  form- 
ing hoop-skirts,  which  rendered  necessary  the  use  of  a 
former,  it  was  held,  the  inventor  had  a  right  to  claim  the 
use  of  the  apparatus  as  incidental  and  subsidiary  to  the 
practical  purpose  of  the  idea  constituting  his  invention; 
and  that  therefore  it  was  immaterial  that  the  apparatus 
of  the  former  was  old.  (Mann  ex  parte,  MS.  Appeal 
Cases,  D.  G.,  1860.) 

36.  IDENTITY  OF  PRINCIPLE. — The  word  principle  means 
the  operative  cause  by  which  a  certain  effect  is  produced, 
the  combination  of  certain  mechanical  powers,  the  mode 
of  operation,  the  mode  or  manner  of  operation;  and 
hence  there  may  be  two  structures,  widely  different  in 
appearance  or  dimensions,  which  are  yet  identical  in  prin- 
ciple. Whatever  is  essential  to  produce  the  appropriate 
result  of  a  machine,  independent  of  its  mere  form,  is  a 
matter  of  principle.  (Latta  v.  Shawk,  1  Fish.,  465.) 

One  machine  or  manufacture  is  not  a  violation  of  an- 
other, within  the  purview  of  the  patent  system,  unless  it 
is  substantially  the  same.  It  need  not  be  identical,  but 
it  must  be  similar  in  the  principle  or  mode  of  operation. 
(Smith  v.  Downing,  1  Fish.,  64.) 
21 


242  PKOCEDURE  IN  THE  PATENT  OEFICE. 

The  identity  that  is  to  be  looked  to  iu  an  action  of  in- 
fringement respects  that  which-  constitutes  the  essence 
of  the  invention,  namely,  the  application  of  the  principle. 
If  the  mode  adopted  by  the  defendant  shows  that  the 
principle  admits  of  the  same  application  in  a  variety  of 
forms,  or  by  a  variety  of  apparatus,  such  mode  is  a  pi- 
racy of  the  invention.  (Wintermute  v.  Redington,  1  Fish., 
239.) 

But  if  the  defendant  has  adopted  variations  which 
show  that  some  other  law,  or  rule  of  practice  or  science, 
is  made  to  take  the  place  of  that  which  the  patentee 
claims  as  the  essence  of  his  invention,  then  there  is  no 
infringement.  (Ib.) 

If  the  same  result  is  produced  by  the  defendant  as  by 
the  patentee,  but  by  means  substantially  different,  there 
is  no  infringement,  for  a  patent  is  not  granted  for  a  mere 
result ;  but,  otherwise,  if  the  defendant  produces  the  re- 
sult by  contrivances  substantially  the  same  in  principle. 
(Morris  v.  Barrett,  1  Fish.,  461.) 

If  the  parts  of  two  machines,  having  the  same  mode 
of  operation,  do  the  same  work  in  substantially  the  same 
way,  and  accomplish  substantially  the  same  result,  those 
parts  are  the  same,  although  they  may  differ  in  name, 
form,  or  shape.  ( Union  Sugar  Refinery  v.  Matthiessen,  2 
Fish.,  600.) 

Two  structures  are  "substantially"  the  same  when 
they  are  of  the  same  material,  if  material  is  important; 
of  the  same  thickness,  if  thickness  is  important;  or  of 
the  same  form,  when  form  contributes  to  the  result. — 
(Adams  v.  Edwards,  1  Fish.,  1.) 

The  identity  or  diversity  of  two  machines  depends, 
not  on  the  employment  of  the  same  elements  or  powers 


SUBJECT-MATTER  OF  APPLICATION.  243 

of  mechanism,  but  upon  producing  the  given  effect  by 
substantially  the  same  mode  of  operation  or  substan- 
tially the  same  combination  of  powers.  One  device  can- 
not be  said  to  be  a  well-known  substitute  of  another, 
which  cannot  be  used  for  it.  (Crompton  v.  Belknap  Mills, 
3  Fish.,  563.) 

"Where  a  patent  is  for  a  combination  of  distinct  and 
designated  parts,  it  is  not  infringed  by  a  combination 
which  varies  from  that  patented,  in  the  omission  of  one 
of  the  operative  parts  and  the  substitution  therefor  of 
another  part,  substantially  different  in  its  construction 
and  operation,  but  serving  the  same  purpose.  (Eames  v. 
Godfrey,  1  Wallace,  78.) 

"Substantial  identity"  excludes  immaterial  variations 
or  fraudulent  evasions.  That  is  a  substantial  identity 
which  comprehends  the  application  of  the  principle  of 
the  invention.  If  a  party  adopts  a  different  mode  of  car- 
rying the  same  principle  into  effect,  and  the  principle 
admits  of  a  variety  of  forms,  there  is  an  identity  of  prin- 
ciple though  not  an  identity  of  mode.  (Page  v.  Ferry, 
1  Fish.,  298.) 

37.  COMPOSITION  OF  MATTER. — The  term  "composition 
of  matter"  includes  medicines,  compositions  used  in  the 
arts,  and  other  combinations  of  substances  intended  to 
be  sold  separately.  In  such  cases  the  subject-matter  of 
the  patent  may  be  either  the  composition  itself,  the  arti- 
cle produced,  or  it  may  be  the  mode  or  process  of  com- 
pounding it.  Generally  speaking  the  patent  covers 
both,  because,  if  the  composition  is  itself  new,  the  pro- 
cess by  which  it  is  made  must  also  be  new,  and  the  law 
will  protect  both  as  the  subjects  of  invention.  (Curtis  on 
Patents,  §  28.) 


244  PROCEDURE  IN  THE  PATENT  OFFICE. 

It  is  no  ground  for  the  rejection  of  an  application  for 
a  patent  for  a  composition  of  matter  that  the  thing  in- 
vented is  an  imitation  of  a  real  existing  substance  or 
material,  e.  g.,  artificial  honey.  (CorUn  £  Martlett  exparte, 
MS.  Appeal  Cases,  D.  C.,  1857.) 

It  is  not  necessary,  to  render  a  composition  patent- 
able,  that  every  ingredient  or  that  any  one  ingredient 
used  by  the  patentee  in  his  invention  should  be  new  or 
unused  before  for  the  purpose  intended.  The  question 
is,  whether  the  combination  of  materials  used  by  the 
patentee  is  substantially  new.  Each  of  the  ingredients 
may  have  been  in  extensive  common  use,  and  some  may 
have  been  used  for  the  same  purpose;  but  if  they  have 
never  been  combined  together  in  the  manner  stated 
in  the  patent,  but  the  combination  is  new,  the  invention 
of  the  combination  is  patentable.  (Ryan  v.  Goodwin,  3 
Sumn.,  518.) 

The  inventor  of  a  new  compound,  wholly  unknown 
before,  is  not  limited  to  the  use  always  of  the  same  pre- 
cise ingredients  in  making  that  compound ;  and  if  the 
same  purpose  can  be  accomplished  by  him  by  the  substi- 
tution in  part  of  other  ingredients  in  the  composition, 
which  have  never  been  so  used  before,  he  is  at  liberty  to 
extend  his  patent  so  as  to  embrace  them  also.  Thus,  where 
an  inventor  claimed  as  his  invention  the  combination  of 
phosphorus  with  chalk  or  any  other  absorbent  earth  or 
earthy  material,  or  glue  or  any  other  glutinous  substance, 
using  the  materials  in  the  proportions  substantially  as  set 
forth  in  the  specification,  in  making  matches,  it  was  held, 
that  the  patent  was  not  void  as  being  too  broad  and  com- 
prehensive. (J6.,  521.) 

The  question  is,  not  whether  the  compositions  are  iden- 


SUBJECT-MATTER  OF  APPLICATION.  245 

tical,  but  are  they  substantially  the  same.  (Street  v.  Sil- 
ver, Brighiley,  100.) 

Where  a  patent  is  claimed  for  a  discovery  of  a  new 
substance,  by  means  of  chemical  combinations  of  known 
materials,  it  should  state  the  component  parts  of  the  new 
manufacture  claimed  with  clearness  and  precision,  and 
not  leave  the  person  attempting  to  use  the  discovery  to 
find  it  out  by  "  experiment."  ( Tyler  v.  Boston,  1  Wallace, 
327.) 

38.  IMPROVEMENT. — Improvement,  applied  to  machin- 
ery, is  where  a  specific  machine  already  exists,  and  an 
addition  is  made  to  produce  the  same  effects  in  a  better 
manner,  or  some  new  combinations  are  added  to  produce 
new  effects.  (Fultz  exparte,  MS.  Appeal  Cases, D.  C,  1853.) 

If  the  discovery  be  an  improvement  only,  it  must  be 
an  improvement  on  the  principle  of  the  machine,  art,  or 
manufacture,  before  known  or  in  use.  If  only  in  the  form 
or  proportion,  it  has  not  the  merit  of  discovery,  which  can 
entitle  the  party  to  a  patent.  (Evans  v.  Eaton,  Pet.  C.  C., 
342.) 

If  a  machine  substantially  existed  before,  and  a  person 
has  made  an  improvement  only  thereon,  he  is  entitled  to 
a  patent  for  such  improvement  only,  and  not  for  the 
whole  machine.  ( Woodcock  v.  Parker,  1  Gall.,  439.) 

Where  a  specific  machine  already  exists,  producing 
certain  effects,  if  a  mere  addition  is  made  to  such  ma- 
chine, to  produce  the  same  effects  in  a  better  manner,  a  pat- 
ent cannot  be  taken  for  the  whole  machine,  but  for  the 
improvement  only.  The  case  of  the  watch  is  a  familiar 
instance.  The  inventor  of  the  patent  lever,  without 
doubt,  added  a  very  useful  improvement  to  it,  but  his 
right  to  a  patent  could  not  be  more  extensive  than  his 
21* 


246  PROCEDURE  IN  THE  PATENT  OFFICE. 

invention.  The  patent  could  not  cover  the  whole  ma- 
chine, but  barely  the  actual  improvement.  The  same 
illustration  might  be  drawn  from  the  steam  engine,  so 
much  improved  by  Messrs.  Watt  and  Boulton.  In  like 
manner,  if  to  an  old  machine  some  new  combinations 
are  added  to  produce  new  effects,  the  right  to  a  patent*is 
limited  to  the  new  combination.  ( Whittemore  v.  Cutter, 

1  Gall,  480.) 

On  the  other  hand,  if  well-known  effects  are  produced 
by  machinery,  in  all  its  combinations  entirely  new,  a  patent 
may  be  claimed  for  the  whole  machine.  (lb.,  480.) 

A  slight  alteration  in  the  structure  of  a  machine,  or  in 
the  improvement  of  it,  will  not  entitle  an  individual  to  a 
patent.  There  must  be  a  substantial  difference  in  the 
principle  and  the  application  of  it  to  constitute  such  an 
improvement  as  the  law  will  protect.  (Smith  v.  Pearce, 

2  McLean,  178.) 

An  improvement  on  a  combination  is  the  subject  of  a 
patent,  but  at  the  same  time  the  improvement  cannot  be 
used  without  the  consent  of  the  original  patentee.  (Fos- 
ter v.  Moore,  1  Curtis,  293.) 

An  improvement  in  a  process  may  be  discovered  irre- 
spective of  any  particular  form  of  machinery.  (Corning 
v.  Burden,  15  How.,  267.) 

A  man  may  improve  a  patented  machine  so  as  to  en- 
title him  to  a  patent  for  his  improvement;  but  that  will 
not  give  him  the  right  to  use  the  invention  of  the  first 
patentee  without  his  license.  (Foss  v.  Herbert,  2  Fish., 
31.) 

Because  a  substance  may  be  an  improvement  upon  a 
product  previously  patented,  and  \rnay  be  patentable  as 
an  improvement,  it  does  not  follow  that  it  can  be  made 


SUBJECT-MATTER  OF  APPLICATION.  247 

and  used  without  the  permission  of  the  owner  of  the 
prior  patent.  (Goodyear Denial  Vulcanite  Company  v. Evans, 
3  Fish.,  390.) 

An  improvement  on  a  patented  invention  may  entitle 
the  party  making  it  to  a  patent,  but  he  cannot  pirate  the 
original  invention.  (Goodyear v.  Mullee,  3  Fish.,  420.) 

When  the  improvements  claimed  are  only  improve- 
ments upon  a  well-known  machine,  the  patentee  cannot 
treat  as  infringers  others  who  have  improved  the  pre- 
viously existing  organization  by  the  use  of  a  different 
arrangement  or  combination,  which,  though  performing 
the  same  functions,  does  it  in  a  different,  simpler,  or  bet- 
ter manner.  (Seymour  v.  Osborne,  3  Fish.,  555.) 

When  a  man  conceives  a  machine,  no  one  knows  ex- 
cept himself;  when  he  describes  it,  no  one  knows  ex- 
cept himself  and  those  to  whom  he  describes  it.  This 
is,  from  the  nature  of  the  case,  the  testimony  upon  which 
»  reliance  must  be  placed.  (Sayles  v.  Hapgood,  3  Fish.,  632.) 

A  patentee  is  not  bound  in  a  new  patent  to  refer  to  his 
former  one.  All  that  is  required  is,  that  he  shall  not 
claim  what  is  covered  by  a  former  invention.  (O'Reilly 
v.  Morse,  15  How.,  122.) 

39.  PRIORITY  OF  INVENTION. — If  it  appears  that  the 
plaintiff  was  not  the  original  inventor,  in  reference  to 
other  parts  of  the  world  as  well  as  America,  he  is  not 
entitled  to  a  patent.  This  point  has  been  decided  other- 
wise in  England,  in  consequence  of  the  expression  in 
the  statute  of  James  I,  which  speaks  of  new  manufac- 
tures within  the  realm.  (Reutgen  v.  Kanowers,  1  Wash., 
170.) 

The  first  inventor  who  has  put  the  invention  into 
practice,  and  he  only,  is  entitled  to  a  patent.  Every  sub- 


248  PROCEDURE  IN  THE  PATENT  OFFICE. 

sequent  patentee,  although  an  original  inventor,  may  be 
defeated  of  his  patent  right  upon  proof  of  such  prior 
invention  put  into  actual  use.  The  law  in  such  case 
adopts  the  rule,  qui  prior  est  in  tempore,  potior  esl  in  jure. 
In  order  to  defeat  a  subsequent  patent,  it  is  not  necessary 
to  prove  that  the  invention  has  been  previously  in  general 
use  and  generally  known.  It  is  sufficient  if  the  same  in- 
vention has  been  previously  known  and  put  in  actual  use, 
however  limited  the  use  or  the  knowledge  of  the  inven- 
tion might  have  been.  (Bedford  v.  Hunt,  1  Mason,  302; 
Whitely  v.Swayne,  1  Wall,  685.) 

The  intent  of  the  statute  was  to  guard  against  defeat- 
ing patents  by  setting  up  a  prior  invention  which  has 
never  been  reduced  to  practice.  If  it  were  the  mere 
speculation  of  a  philosopher  or  a  mechanician,  which 
had  never  been  tried  by  the  test  of  experience,  and  never 
put  into  actual  operation  by  him,  the  law  would  not  de- 
prive a  subsequent  inventor,  who  had  employed  his  labor 
and  his  talents  in  putting  it  into  practice,  of  the  reward 
due  to  his  ingenuity  and  enterprise.  But  if  the  first 
inventor  reduced  his  theory  to  practice,  and  put  his  ma- 
chine or  other  invention  in  use,  the  law  never  could 
intend  that  the  greater  or  less  use  in  which  it  might  be, 
or  the  more  or  less  widely  the  knowledge  or  existence 
might  circulate,  should  constitute  the  criterion  by  which 
to  decide  upon  the  validity  of  any  subsequent  patent  for 
the  same  invention.  (Ib.,  305.) 

And  though  the  patentee  had  no  knowledge  of  the 
previous  use  or  previous  description,  still  his  patent  is 
void :  the  law  supposes  he  may  have  known  it.  (Evans 
v.  Eaton,  3  Wheat.,  514.) 

By  knowledge  and  use,  referred  to  in  the  act,  is  meant 


SUBJECT-MATTER  OF  APPLICATION.  249 

knowledge  and  use  existing  in  a  manner  accessible  to 
the  public.  (Gayler  v.  Wilder,  10  How.,  497.) 

Prior  machines  relied  upon  to  defeat  a  subsequent  pat- 
ent must  have  been  working  machines,  which  have 
either  done  work  or  been  capable  of  doing  it.  ( Wood- 
man v.  Stimson,  3  Fish.,  98.) 

And  if  a  prior  machine  were  merely  got  up  for  the 
purpose  of  experiment,  and  was  not  practically  tested,  it 
would  not  constitute  a  practical  invention.  (Swift  v.  Whi- 
sen,  3  Fish.,  343.) 

If  a  previous  patent  so  far  describes  a  machine  covered 
by  a  subsequent  patent  that  any  mechanic  of  ordinary 
skill  could,  from  the  description  in  the  first  patent,  con- 
struct or  supply  all  essential  parts  of  the  mechanism  de- 
scribed in  the  second  patent,  the  latter  is  void.  ( Wood- 
man v.  Stimson,  3  Fish.,  98. 

Clifford,  J.,  in  delivering  the  opinion  of  the  court  in 
the  case  of  White  v.  Allen,  (2  Fish.,  444,)  said:  "Orig- 
inal and  first  inventors  are  entitled  to  the  benefits  of 
their  inventions,  if  they  reduce  them  to  practice  and 
seasonably  comply  with  the  requirements  of  the  pat- 
ent law  in  procuring  letters  patent  for  the  protection  of 
their  exclusive  rights.  While  the  suggested  improve- 
ment, however,  rests  merely  in  the  mind  of  the  origi- 
nator of  the  idea,  the  invention  is  not  completed  within 
the  meaning  of  the  patent  law,  nor  are  crude  and  imper- 
fect experiments  sufficient  to  confer  a  right  to  a  patent; 
but  in  order  to  constitute  an  invention  in  the  sense  in 
which  that  word  is  employed  in  the  patent  act,  the  party 
alleged  to  have  produced  it  must  have  proceeded  so  far 
as  to  have  reduced  his  idea  to  practice,  and  embodied  it 
in  some  distinct  form."  (Gayler  v.  Wilder  et  al.,  16  How., 


250  PROCEDURE  IN  THE  PATENT  OFFICE. 

498;  Parkhurst  v.  Kinsman,  1  Blatchf.,  494;  Curtis  on  Pat- 
ents., §  43.) 

"Mere  discovery  of  an  improvement  does  not  consti- 
tute it  the  subject-matter  of  a  patent,  although  the  ideas 
which  it  involves  may  be  new;  but  the  new  set  of  ideas, 
in  order  to  become  patentable,  must  be  embodied  into 
working  machinery  and  adapted  to  practical  use."  (Sickles 
v.  Borden,  3  Blatchf.,  535.) 

"  'Whoever  first  perfects  a  machine  and  makes  it  capa- 
ble of  useful  operation,'  says  Judge  Story,  'is  entitled 
to  a  patent,'  and  he  accordingly  held,  in  Reed  v.  Cutter, 
(1  Story  C.  C.,  599,)  'that  an  imperfect  and  incomplete  in- 
vention, resting  in  mere  theory,  or  in  intellectual  notion, 
or  in  uncertain  experiments,  and  not  actually  reduced  to 
practice  and  embodied  in  some  distinct  machinery,  appa- 
ratus, manufacture,  or  composition  of  matter,  was  not 
patentable  under  the  patent  laws  of  the  United  States.' 
Pursuant  to  that  rule,  the  same  learned  judge  also  held, 
'that  he  is  the  first  inventor,  in  the  sense  of  the  patent 
act,  and  entitled  to  a  patent  for  his  invention,  who  has 
first  perfected  and  adapted  the  same  to  use,  and  that, 
until  the  invention  is  so  perfected  and  adapted  to  use,  it 
is  not  patentable  under  the  patent  laws.' "  (  Washburn  v. 
Gould,  3  Story  C.  C.,  33;  Woodcock  v.  Parker  et  al,  I  Gall. 

a  a,  121.) 

Mr.  Justice  Nelson  says,  in  Winans  v.  New  York  and  Har- 
lem Railroad  Company,  (Franklin  Journal,  3  series,  vol. 
61,  p.  322:)  "The  circumstance  that  a  person  has  had 
an  idea  of  an  improvement  in  his  head,  or  has  sketched 
it  upon  paper,  has  drawn  it,  and  then  gives  it  up,  neg- 
lects it,  does  not  in  judgment  of  law  constitute,  or  have 
the  effect  to  constitute,  him  a  first  and  original  inventor. 


SUBJECT-MATTER  OF  APPLICATION.  251 

It  is  not  the  person  who  has  only  produced  the  idea  that 
is  entitled  to  protection  as  an  inventor,  but  the  person 
who  has  embodied  the  idea  into  a  practical  machine  and 
reduced  it  to  practical  use.  He  who  has  first  done  that, 
is  the  inventor  who  is  entitled  to  protection." 

In  Ducheman  v.  Richardson,  (Decisions,  April  7, 1870,)  re- 
ferring to  the  doctrine  stated  by  Justice  Clifford  in  White' 
v.  Allen,  the  Commissioner  says:  "On  the  other  hand, 
there  can  be  no  doubt  that  the  Patent  Office  has,  in  the 
main,  accepted  a  lower  standard  of  invention.  Sketches, 
drawings,  models,  or  machines  of  the  crudest  description, 
and  mere  conversations,  have  in  some  cases  been  held 
sufficient  to  constitute  invention. 

"  The  practice  in  the  Patent  Office  has  grown  up  from 
the  perversion  of  a  principle,  which  is  referred  to  by  Mr. 
Justice  Clifford,  in  White  v.  Allen,  as  a  limitation  of  the 
doctrine  cited.  He  says:  'Taken  as  a  general  rule,  no 
doubt  is  entertained  of  the  correctness  of  the  proposition 
as  stated ;  but  it  must  be  regarded  as  subject  to  the  qual- 
ification that  he  who  invents  first  shall  have  the  prior 
right,  if,  as  is  prescribed  in  §  15  of  the  patent  act,  he  is 
using  reasonable  diligence  in  adapting  and  perfecting  the 
same  within  the  meaning  of  that  provision.' '  (Reed  v. 
Cutter,  1  Story,  600;  Marshall  v.  Mee,  Law's  Dig.,  426; 
Bartholomew  v.  Sawyer,  1  Fish.,  516.) 

"Undoubtedly,  where  two  men  have  hit  upon  the  same 
idea,  and  are  both  diligently  engaged  in  experimenting 
or  in  perfecting  their  inventions,  it  is  proper  to  go  back 
to  the  very  beginning  of  the  invention,  to  its  first  em- 
bodiment in  any  form,  to  determine  which  of  them  is 
prior  in  point  of  time.  But  where  one  of  the  parties 
has  been  negligent,  or  has  not  perfected  the  invention  at 


252  PROCEDURE  IN  THE  PATENT  OFFICE. 

all,  or  the  other  party  has  not  only  perfected  but  has  pat- 
ented his  device,  then  the  rule  as  administered  in  the 
courts  should  prevail,  and  no  evidence  of  priority  should 
be  received  that  falls  short  of  a  reduction  to  practice  in 
working  mechanism."  (Oahoon  v.  Ring,  1  Fish.,  897;  1 
Clifford,  592.) 

40.  LOST  ART. — Tf  any  one  should  discover- a  lost  art, 
and  it  was  a  useful  improvement,  he  would  be  entitled  to 
a  patent ;  for,  although  not  literally  the  original  and  first 
inventor,  he  would  be  the  first  to  confer  on  the  public 
the  benefit  of  the  invention.    (Gayler  v.  Wilder,  10  How., 
497.) 

41.  INVENTOR  MAY  AVAIL  HIMSELF  OF  PRIOR  EXPERI- 
MENTS.— If  a  prior  inventor  fall  short  of  making  a  com- 
plete machine,  practically  useful^ those  who  come  after 
him  may  secure  to  themselves  the  advantages  of  his  in- 
vention.   To  constitute  prior  invention,  the  inventor  must 
have  proceeded  so  far  as  to  entitle  himself  to  a  patent. 
(Hoice  v.  Underwood,  1  Fish.,  160.) 

Thus,  where  a  patent  has  been  granted  for  improve- 
ments which,  after  a  full  and  fair  trial,  resulted  in  un- 
successful experiments,  and  have  been  finally  abandoned, 
if  another  person  takes  up  the  subject  of  the  improve- 
ments and  is  successful,  he  is  entitled  to  the  merit  of 
them  as  an  original  inventor.  ( Whitely  v.  Swayne,  7 
Wallace,  685.) 

42.  PRIOR  PUBLICATION. — A  bona  fide  inventor  in  this 
country,  and  who  believed  himself  to  be  the  original  and 
first  inventor  at  the  time  of  his  application,  is  entitled  to 
a  patent  for  his  invention,  though  the  same  invention 
may  have  been  known  or  used  in  a  foreign  country,  pro- 
vided it  had  not  been  patented  or  described  in  any  printed 


SUBJECT-MATTER  OF  APPLICATION.  253 

publication.  (Parker  v.  Stiles,  5  McLean,  61;  Swift  v. 
Whisen,  3  ^sA.,  343.) 

But  it  will  be  fatal  to  the  right  of  the  patentee  if  the 
thing  invented  or  discovered  has  been  described  in  any 
foreign  publication.  This  goes  upon  the  presumption, 
if  such  foreign  publication  has  been  made,  the  pat- 
entee may  have  acquired  a  knowledge  of  it.  (Allen  v. 
Hunter,  6  McLean,  313.) 

Unless  such  publication  was  prior  in  point  of  time  to 
the  invention  of  the  patentee  it  will  not  avoid  the  patent. 
It  is  not  sufficient  that  such  publication  was  prior  to  the 
application  of  the  patentee  for  his  patent.  (Bartholomew 
v.  Sawyer,  1  Fish.,  516.) 

It  must  appear  that  the  improvement  which  has  been 
known  in  a  foreign  country  has  been  so  clearly  described 
that  the  invention  could  be  constructed  by  a  competent 
mechanic.  (Judson  v.  Cope,  1  Fish.,  615.) 

An  imperfect  description  would  not  be  sufficient  to 
defeat  the  American  patent;  and,  in  order  to  find  a  pat- 
ented invention  anticipated  in  a  prior  printed  publication, 
the  jury  must  find  from  the  evidence  that  the  description 
embodies  substantially  the  same  organized  mechanism,  oper- 
ating substantially  in  the  same  manner  as  that  described 
in  the  patent.  (Clark  Patent  Steam  and  Fire-Eegulator 
Company  v.  Copeland,  1862,  2  Fish.,  221.) 

And  the  defendant  in  a  patent  cause  may  show  that 
the  thing  patented,  or  some  substantial  part  thereof,  ex- 
isted in  a  foreign  country,  and  was  known  to  the  pat- 
entee before  his  application  for  a  patent,  and  may  have 
put  to  the  jury  the  question,  whether  the  patentee  be- 
lieved himself  to  be  the  original  inventor,  though  such 
foreign  invention  had  not  previously  been  patented  or 
22 


254  PROCEDURE  IN  THE  PATENT  OFFICE. 

described  in  any  printed  publication.     (Forbush  v.  Cook, 
2  Fish.,  668.) 

43.  PRIOR  FOREIGN  PATENT. — A  foreign  patent,  to  de- 
stroy a  patent  granted  in  this  country,  must  have  been 
granted  before  the  invention  here,  not  merely  before  the 
application  for  letters  patent.     (Howev.  Morton,  1  Fish., 
586.) 

An  invention  is  not  "patented"  in  England,  within 
the  meaning  of  the  acts  of  Congress,  until  the  specifica- 
tion is  enrolled.  The  enrolled  specification  takes  effect 
only  from  the  date  of  its  enrollment,  and  not  from  the 
date  of  the  provisional  specification.  (J-b.) 

In  determining  the  proper  reading  of  a  disputed  trans- 
lation of  a  foreign  patent,  the  following  considerations 
are  applicable :  1."  Which  translation  is  most  literal;  2. 
The  question  should  be  examined  in  view  of  the  other 
parts  of  the  instrument  not  involved  in  any  doubt;  3. 
Recurrence  should  be  made  to  the  nature  of  the  inven- 
tion, to  see  if  it  is  consistent  with  either  or  both  read- 
ings; and,  4.  If  it  be  found  that  one  of  the  translations 
is  repugnant  to  other  parts  of  the  instrument,  and  the 
other  is  consistent  with  the  other  parts,  it  will  be  safe  to 
adopt  the  latter.  ( White  v.  Allen,  2  Fish.,  440.) 

44.  UNITY  OR  DIVERSITY  OF  INVENTION. — A  single  pat- 
ent cannot  embrace  two  machines,  which  are  wholly 
independent  of  each  other  and  distinct  inventions  for 
unconnected  objects,  nor  for  several  distinct  improve- 
ments upon  different  machines  having  no  common  con- 
nection or  common  purpose;  but  a  single  patent  may  be 
taken  out  for  several  inventions  or  improvements,  if  they 
conduce  to  the  accomplishment  of  one  and  the  same  gen- 
eral end.     (Wythe  v.  Stone,  1  Story,  288,  et  seq.) 


SUBJECT-MATTER  OF  APPLICATION.  255 

In  the  case  of  Atwood  ex  parte,  the  Commissioner  says: 

"  There  would  seem  to  be  an  obvious  impropriety  in 
allowing  an  inventor  to  make  application  and  obtain  a 
patent  for  some  trifling  improvement,  and  then  come  in 
at  any  time  within  two  years,  as  suggested  by  counsel, 
and  claim  another  patent  covering  broadly  the  machine 
improved  and  already  described  in  the  first  patent,  so 
that  the  first  patent  would  become  tributary  to  the  sec- 
ond, and  the  unlucky  purchaser  of  the  first  would  become 
an  infringer  of  the  second  in  the  hands  of  his  grantor. 

"The  law  gives  ample  facilities  for  patenting  every 
improvement  shown  in  an  application.  It  provides  a 
system  of  re-examinations  and  appeals  before  the  patent 
goes  out ;  and,  even  after  the  issue  of  a  patent,  it  permits 
the  owner  to  reissue  it  and  to  subdivide  it,  until  nothing 
is  left  upon  which  to  found  a.  claim.  All  claims  granted 
upon  the  thing  described  have  a  common  origin — the 
original  application.  The  monopoly  founded  upon  them 
has  a  common  duration — the  lifetime  of  the  original  pat- 
ent. This  is  just  to  the  inventor,  and  it  is  just  to  the 
public.  It  is  a  sound  practice,  and  the  only  safe  one. 

"  I  answer  the  questions  of  the  examiner  as  follows:  1. 
The  case  of  Suffolk  Company  v.  Hayden  in  no  way  controls 
the  practice  in  the  Patent  Office.  2.  When  an  applica- 
tion is  filed,  every  invention  contained  in  that  application 
must  be  patented  under  it,  or  under  such  divisions  of  it 
as  the  wishes  of  the  applicant  and  the  rules  of  the  office 
may  permit."  (Commissioner' 's  Decisions,  1869,  p.  98.) 

45.  THE  QUESTION  OF  THE  DIVISION  OF  AN  INVENTION 
INTO  SEPARATE  PATENTS  is  WITHIN  THE  DISCRETION  OF  THE 
COMMISSIONER. — It  is  difficult,  perhaps  impossible,  to  lay 
down  any  general  rule  by  which  to  determine  when  a 


256  PROCEDURE  IN  THE  PATENT  OFFICE. 

given  invention  or  improvement  should  be  embodied  in 
one,  two,  or  more  patents;  some  discretion  must  neces- 
sarily be  left  on  this  subject  to  the  head  of  the  Patent 
Office.  It  is  often  a  nice  and  perplexing  question.  (Ben- 
nett v.  Fowler,  8  Wall,  445.) 

The  case  of  Hoggv.  Emerson  (6  How.,  483)  has  usually 
been  relied  upon  as  authorizing  the  union  of  several  de- 
vices, machines,  or  improvements,  under  a  single  patent. 
In  that  case  letters  patent  had  been  granted  covering  an 
improvement  in  a  spiral  propelling  wheel  and  in  a  cap- 
stan. This  was  an  extreme  case,  and  the  defendant  con- 
tended that  the  patent  was  void.  The  court  say :  "  The 
next  objection  is,  that  this  description  in  the  letters  thus 
considered  covers  more  than  one  patent,  and  is  therefore 
void. 

"  There  seems  to  have  been  no  good  reason  at  first, 
unless  it  be  a  fiscal  one  on  the  part  of  the  Government 
when  issuing  patents,  why  more  than  one,  in  favor  of 
the  same  inventor,  should  not  be  embraced  in  one  in- 
strument, like  more  than  one  tract  of  land  in  one  deed 
or  patent  of  land."  (Phillips  on  Pat,  217.) 

"Each  could  be  set  out  in  separate  articles  or  para- 
graphs, as  different  counts  for  different  matters  in  libels 
in  admiralty  or  declarations  at  common  law,  and  the 
specifications  could  be  made  distinct  for  each,  and  equally 
clear. 

"But,  to  obtain  more  revenue,  the  public  officers  have 
generally  declined  to  issue  letters  for  more  than  one  pat- 
ent described  in  them."  (Renouard,  293 ;  Phillips  on  Pat., 
218.)  "The  courts  have  been  disposed  to  acquiesce  in 
the  practice,  as  conducive  to  clearness  and  certainty;  and 
if  letters  issue  otherwise,  inadvertently,  to  hold  them,  as 


SUBJECT-MATTER  OF  APPLICATION.  257 

a  general  rule,  null.  But  it  is  a  well-established  excep- 
tion, that  patents  may  be  united  if  two  or  more,  included 
in  one  set  of  letters,  relate  to  a  like  subject,  or  are  in 
their  nature  or  operation  connected  together."  (Phillips 
ottPart.,218,219;  Barrettv.Hall,  1  Mason C.C.^1;  Moody 
r.  Fiske,  2  Mason  C.  <?.,  112;  Wythe  et  al  v.  Stone  et  aL,  1 
Story,  273.) 

"Those  here  of  that  character,  being  all  connected 
with  the  use  of  the  improvements  in  the  steam-engine 
as  applied  to  propel  carriages  or  vessels,  and  may  there- 
fore be  united  in  one  instrument." 

In  Rootv.  Ball  £  Davis  (4  McLean,  179)  the  court  say: 
"It  is  objected  to  the  plaintiff's  patent  that  two  distinct 
things  cannot  be  united  in  the  same  patent.  This  is  true 
when  the  inventions  relate  to  two  distinct  machines; 
and  the  reason  assigned  is,  that  it  would  deprive  the  offi- 
cers of  the  Government  of  their  fees,  and  in  other  re- 
spects would  be  inconvenient.  But  the  same  patent  m-ay 
include  a  patent  for  a  combination  and  an  invention  of 
some  of  the  parts  of  which  the  combination  consists." 

The  doctrine  of  both  of  these  cases  seems  to  be,  that 
while  the  rule  which  assigns  distinct  inventions  to  dis- 
tinct patents  is  a  proper  one,  and  one  which  the  Com- 
missioner may  properly  enforce,  yet,  if  the  patent  actu- 
ally issue,  the  courts  will  sustain  it.  It  is  certainly  no- 
where asserted  that  it  is  the  duty  of  the  Commissioner 
to  include  two  or  more  inventions  in  one  patent,  but  it 
is  evidently  referred  to  his  discretion.  There  are  numer- 
ous cases  in  which  it  has  been  held,  that  a  patent,  once 
granted  is  to  be  liberally  construed;  that  it  is  to  be  pre- 
sumed that  public  officers  do  their  duty;  that  the  court 
will  not  inquire  into  slight  defects  or  mere  informalities 
22* 


258  PROCEDURE  IN  THE  PATENT  OFFICE. 

in  the  grant  of  letters  patent,  where  there  is  a  meritorious 
invention.  Yet  it  would  be  a  grave  error  to  found  upon 
such  decisions  a  rule  of  action  for  the  Commissioner;  for 
it  by  no  means  follows,  because  a  patent  has  been  sus- 
tained, notwithstanding  certain  informalities  in  the  issue, 
that  every  succeeding  patent  is  to  exhibit  the  same  in- 
formalities. In  Tompkws  v.  Gage  (2  Fish.,  580)  it  was 
held,  that  the  second  claim  of  the  patent  under  consider- 
ation was  but  a  repetition  of  the  first;  but  that  "duplic- 
ity of  claim  "  did  not  affect  the  validity  of  the  patent.  It 
could  hardly  be  gravely  contended,  however,  that  upon 
the  authority  of  this  decision  the  Commissioner  should 
encourage  or  permit  the  granting  of  duplicate  claims. 

The  whole  question  is  one  of  discretion  in  the  Com- 
missioner. 

It  may  be  conceded  that  it  is  difficult  to  establish  any 
general  rule  for  the  division  of  inventions  into  separate 
patents,  which  shall  apply  to  all  cases,  or  which  shall  not 
be  subject  to  many  exceptions.  In  both  of  the  cases 
quoted,  it  is  suggested  that  the  union  of  many  inventions 
in  one  patent  would  deprive  the  Government  of  its  proper 
fees.  This  is  a  legitimate  consideration.  A  fee  of  $15  is 
now  charged  for  examination  into  the  novelty,  utility,  arid 
patentability  of  an  invention.  This  is  a  very  reasonable 
charge,  and  is  much  less  than  it  would  cost  to  make  the 
examination  in  any  other  way.  Indeed,  the  fees  for  all 
services  in  the  Patent  Office  are  less  than  are  charged  in 
any  other  country,  while  the  service  performed  for  the 
applicant  by  the  office  is  much  greater. 

It  would  be  unjust  to  the  Government,  to  the  public 
at  large,  and  to  other  inventors,  to  permit  one  of  their 
number  to  present  a  batch  of  inventions  for  examination 


REQUISITES  OF  THE  APPLICATION.  259 

under  a  single  fee,  for  he  would  receive  more  of  the  time 
of  the  examiner  than  he  had  paid  for.  Another  consid- 
eration, which  is  not  less  important,  is  found  in  the  class- 
ification of  the  various  subjects  of  invention,  and  the  as- 
signment of  the  different  classes  to  different  examiners. 
This  division  of  labor  is  absolutely  essential  to  the  prompt 
and  thorough  examination  of  applications.  It  is  adopted 
to  facilitate  the  transaction  of  the  public  business,  and 
the  inventor  himself  is  directly  and  immediately  benefit- 
ted  by  a  strict  adherence  to  it.  Any  union  of  inventions 
in  one  patent,  that  would  seriously  impair  this  classifica- 
tion, ought  not  to  be  permitted.  Besides  the  delay  and 
increased  difficulty  in  making  the  examination,  if  the 
patent  covers  devices  which  enter  into  two  classes,  the 
drawing,  which  is  single,  must  be  deposited  in  the  port- 
folio of  the  one  class,  and  be  wanting  in  the  portfolio  of 
the  other.  It  may  thus  be  overlooked  in  the  examination 
of  the  next  case. 

It  may  therefore  be  said  in  general,  that  when  two  or 
more  distinct  inventions  are  united  in  one  application 
that  are  capable  of  division,  and  which  belong  to  differ- 
ent classes,  or  involve  a  double  labor  of  examination,  or 
have  no  community  of  operation,  it  is  not  only  the  right, 
but  it  becomes  the  duty  of  the  Commissioner  to  require 
the  application  to  be  divided.  (Linus  Yale,  jr.,  ex  parte, 
Commissioner's  Decisions,  1869,  p.  110.) 

III.  Requisites  of  the  Application. 


SEC. 

46.  Application  made  to  Commis- 


sioner. 


47.  Time  to  complete  application. 


SEC. 

48.  Clerical  requirements. 

49.  Completion  of  the  application. 

50.  Rules  of  correspondence. 


260 


PROCEDURE  IN  THE  PATENT  OFFICE. 


SEC. 

51.  Pending  applications  preserved 

in  secrecy. 

52.  Information   furnished   after   a 

patent  has  been  issued  or  the 
application  abandoned. 

53.  Inquiries  not  answered. 

54.  Two  years'  use  allowed. 

55.  Public  use,  common  use. 


SEC. 

56.  Delays  at  the  Patent  Office. 

57.  Abandonment  within  two  years. 

58.  Delay  unimportant,  unless  evi- 

dence of  abandonment. 

59.  Continuing  application. 

60.  Commissioner  may  refuse  a  pat- 

ent which  would  be  sustained 
by  the  courts. 


46.  APPLICATION  TO  BE  MADE  TO  THE  COMMISSIONER  OF 
PATENTS. — Before  any  inventor  or  discoverer  shall  re- 
ceive a  patent  for  his  invention  or  discovery,  he  shall 
make  application  therefor,  in  writing,  to  the  Commis- 
sioner, &c.     (Act  of  July  8,  1870,  §  26.) 

47.  TIME  TO  COMPLETE  AND  PROSECUTE  APPLICATIONS. — 
All  applications  for  patents  shall  be  completed  and  pre- 
pared for  examination  within  two  years  after  the  filing 
of  the  petition,  and  in  default  thereof,  or  upon  failure 
of  the  applicant  to  prosecute  the  same  within  two  years 
after  any  action  therein,  of  which  notice  shall  have  been 
given  to  the  applicant,  they  shall  be  regarded  as  aban- 
doned by  the  parties  thereto,  unless  it  be  shown  to  the 
satisfaction  of  the  Commissioner  that  such  delay  was  un- 
avoidable.    (Act  of  July  8,  1870,  §  32.) 

48.  CLERICAL  REQUIREMENTS. — The  application  must 
be  in  writing,  in  the  English  language,  and  addressed  to 
the  Commissioner  of  Patents.     The  petition  and  specifi- 
cation must  be  separately  signed  by  the  inventor.     All 
claims  and  specifications  filed  in  this  ofiice  (including 
amendments)  must  be  written  in  a  fair,  legible  hand, 
without  interlineations  or  erasures,  except  such  as  are 
clearly  stated  in  a  marginal  or  foot  note,  written  on  the 
same  sheet  of  paper;  otherwise  the  office  may  require 


REQUISITES  OF  THE  APPLICATION.  261 

them  to  be  printed.  All  the  papers  constituting  the  ap- 
plication must  be  attached  together.  (Patent  Office  Rules, 
July,  1870.) 

49.  APPLICATION  SHOULD  BE  COMPLETE  WHEN  FILED. — 
No  application  can  be  examined,  nor  can  the  case  be 
placed  upon  the  files  for  examination,  until  the  fee  is 
paid,  the  specification,  with  the  petition  and  oath,  filed, 
and  the  drawings  and  model  or  specimen  (when  required) 
filed  or  deposited.     It  is  desirable  that  everything  neces- 
sary to  make  the  application  complete  should  be  depos- 
ited in  the  office  at  the  same  time.     If  otherwise,  a  letter 
should  accompany  each  part  stating  to  what  application 
it  belongs.     (76.) 

50.  RULES  OF  CORRESPONDENCE. — All  correspondence 
must  be  in  the  name  of  the  "  Commissioner  of  Patents," 
and  all  letters  and  other  communications  intended  for 
the  office  must  be  addressed  to  him.     If  addressed  to  the 
Acting  or  Assistant  Commissioner,  chief  clerk,  exam- 
iners, or  any  of  the  other  officers,  they  will  not  be  no- 
ticed, unless  it  should  be  seen  that  the  mistake  was  owing 
to  inadvertence.     A  separate  letter  should  in  every  case 
be  written  in  relation  to  each  distinct  subject  of  inquiry 
or  application,  the  subject  of  the  invention  and  the  date 
of  filing  being  always  carefully  noted.     (Ib.) 

When  an  agent  has  filed  his  power  of  attorney,  duly 
executed,  the  correspondence  will,  in  ordinary  cases,  be 
held  with  him  only.  A  double  correspondence  with  him 
and  his  principal,  if  generally  allowed,  would  largely 
increase  the  labor  of  the  office.  For  the  same  reason 
the  assignee  of  an  entire  interest  in  an  invention  is  en- 
titled to  hold  correspondence  with  the  office  to  the  ex- 
clusion of  the  inventor.  If  the  principal  becomes  dissat- 


262  PROCEDURE  IN  THE  PATENT  OFFICE. 

isfied,  he  must  revoke  his  power  of  attorney  and  notify 
the  office,  which  will  then  communicate  with  him.  (Ib.) 

"Whenever  it  shall  be  found  that  two  or  more  parties 
whose  interests  are  in  conflict  are  represented  by  the 
same  attorney,  the  examiner  in  charge  will  notify  each 
of  said  principal  parties  of  this  fact,  and  also  the  attor- 
ney. (Ib.) 

All  communications  to  and  from  the  Commissioner 
upon  official  business  are  carried  in  the  mail  free  of  post- 
age. (Ib.) 

All  business  with  the  office  should  be  transacted  in 
writing.  Unless  by  the  consent  of  all  parties,  the  action 
of  the  office  will  be  predicated  exclusively  on  the  writ- 
ten record.  No  attention  will  be  paid  to  any  alleged 
verbal  promise  or  understanding  in  relation  to  which 
there  is  any  disagreement  or  doubt.  (Ib.) 

51.  PENDING  APPLICATIONS  PRESERVED  IN  SECRECY.  — 
After  a  second  rejection,  none  of  the  papers  can  be  in- 
spected, save  in  the  presence  of  a  sworn  officer,  nor  will 
any  of  the  papers  be  returned  to  the  applicant  or  agent. 


Aside  from  the  caveats  which  are  required  by  law  to 
be  kept  secret,  all  pending  applications  are,  as  far  as 
practicable,  preserved  in  like  secrecy.  No  information 
will  therefore  be  given  those  inquiring  whether  any  par- 
ticular case  is  before  the  office,  or  whether  any  particu- 
lar person  has  applied  for  a  patent.  (Ib.) 

Information  in  relation  to  pending  cases  is  given  so 
far  as  it  becomes  necessary  in  conducting  the  business 
of  the  office,  but  no  further.  Thus,  when  an  interference 
is  declared  between  two  pending  applications,  each  of  the 
contestants  is  entitled  to  a  knowledge  of  so  much  of  his 


REQUISITES  OF  THE  APPLICATION.  263 

antagonist's  case  as  to  enable  him  to  conduct  his  own 
understandingly.     (Ib.) 

52.  INFORMATION  FURNISHED  AFTER  A  PATENT  HAS  BEEN 
ISSUED  OR  THE  APPLICATION  ABANDONED. — Information  is 
given  in  relation  to  any  case  after  a  patent  has  issued,  or 
after  a  patent  has  been  refused  and  the  further  prosecu- 
tion of  the  application  is  abandoned  or  barred  by  lapse 
of  time.     (Ib.) 

The  models,  in  such  cases,  are  so  placed  as  to  be  sub- 
ject to  general  inspection.  The  specifications  and  draw- 
ings in  any  particular  case  can  be  seen  by  any  one  having 
particular  occasion  to  examine  them,  and  copies  thereof, 
as  well  as  of  patents  granted,  will  be  furnished  at  the 
cost  of  making  them.  Copies  will  be  made  on  parch- 
ment, at  the  request  of  the  applicant,  on  his  paying  the 
additional  cost.  (Ib.) 

Even  after  a  case  is  rejected,  the  application  is  regarded 
as  pending,  unless  the  applicant  allows  the  matter  to  rest 
for  two  years  without  taking  any  further  steps  therein, 
in  which  case  it  will  be  regarded  as  abandoned,  and  will 
no  longer  be  protected  by  any  rule  of  secrecy.  The 
specification,  drawings,  and  model  will  then  be  subject 
to  inspection  in  the  same  manner  as  those  of  patented  or 
withdrawn  applications.  (Ib.) 

53.  INQUIRIES  WHICH  WILL  NOT  BE  RESPONDED  TO. — The 
office  cannot  respond  to  inquiries  as  to  the  novelty  of  an 
alleged  invention  in  advance  of  an  application  for  a  pat- 
ent, nor  upon  inquiries  founded  upon  brief  and  imperfect 
descriptions,  propounded  with  a  view  of  ascertaining 
whether  such  alleged  improvements  have  been  patented, 
and,  if  so,  to  whom;  nor  can  it  act  as  an  expounder  of 
the  patent  law,  nor  as  counsellor  for  individuals,  except 


264  PROCEDURE  IN  THE  PATENT  OEFICE. 

as  to  questions  arising  within  the  office.  A  copy  of  the 
rules,  with  this  section  marked,  sent  to  the  individual 
making  an  inquiry  of  the  character  referred  to,  is  intend- 
ed as  a  respectful  answer  by  the  office.  (Ib.) 

54.  Two  YEARS'  USE  PRIOR  TO  APPLICATION  ALLOWED. — 
Inventors  may  permit  the  use  of  their  inventions,  hy  in- 
dividuals, for  a  period  of  two  years  prior  to  the  applica- 
tion for  a  patent,  and  still  obtain  a  valid  patent,  notwith- 
standing such  use.     But  if  the  use  thus  allowed  extends 
over  a  period  of  more  than  two  years  prior  to  the  applica- 
tion, or  if  it  amounts  to  an  abandonment  of  the  invention 
to  the  public,  whether  for  a  longer  or  shorter  period,  the 
patent  will  be  invalid.     (Curtis  on  Patents,  §  103.) 

The  statute  (ut  supra,  p.  9,  §  24,)  is  inflexible,  as  to 
the  time  when  the  patent  is  to  be  applied  for,  with  refer- 
ence to  the  prior  use  and  sale  of  the  invention.  The 
neglect  to  apply  within  two  years  after  such  sale  or  use 
is  invariably  fatal.  "Whenever  this  fact  appears,  the  pat- 
ent falls.  But  beyond  this  the  provisions  of  the  statute 
are  silent.  (Blandy  v.  Griffith,  3  Fish.,  617.) 

55.  PUBLIC  USE,  COMMON  USE. — A  "public"  use  has 
been  defined  to  be  a  use  in  public;  and  a  single  well-au- 
thenticated instance  of  a  use  in  public  by  the  inventor,  or 
any  one  else,  constitutes  a  legal  public  use. 

A  "  common  "  use  is  a  use  by  the  public;  and  has  been 
defined  to  refer  to  cases  where  the  invention  has  become 
the  subject  of  sale,  known  to  the  trade,  or  so  situated  that 
the  public,  or  any  portion  thereof,  can  and  does  avail  it- 
self of  the  improvement  at  pleasure.  (Hormant  v.  Gil- 
more,  Commissioner's  Decisions,  1870.) 

It  is  not  necessary  that  the  use  should  have  been  a  con- 
tinuing use,  extending  over  a  longer  period  than  two  years 


REQUISITES  OF  THE  APPLICATION.  265 

prior  to  the  application,  in  order  to  render  the  patent  void. 
It  is  sufficient  if  it  be  a  public  use  or  sale  at  any  time,  or 
for  any  length  of  time,  occurring  more  than  two  years 
before  the  filing  of  the  application.  (Sanders  v.  Logan, 
2  Fish.,  167.) 

A  fortiori  if  an  inventor  suffers  his  invention  to  get 
into  general  use  it  will  have  been  in  public  use.  But 
where  the  patentee  alone  makes  the  thing  for  the  pur- 
pose of  exp'eriment  and  completion,  without  selling  it  to 
be  used  by  others,  the  term  public  use  is  not  applicable. 
(Shaw  v.  Cooper,  7  Pet.,  292.) 

56.  DELAYS  AT  THE  PATENT  OFFICE. — By  application 
filed  in  the  Patent  Office  the  inventor  makes  a  full  dis- 
closure of  his  invention,  and  gives  public  notice  of  his 
claim  for  a  patent.  It  is  conclusive  evidence  that  the 
inventor  does  not  intend  to  abandon  it  to  the  public. 
The  delay  afterwards  interposed,  either  by  the  mistakes 
of  public  officers,  or  the  delays  of  courts,  where  gross 
laches  cannot  be  imputed  to  the  applicant,  cannot  affect 
his  right.  (Adams  v.  Jones,  1  Fish.,  527.) 

Such  delays  are  sufficiently  onerous  to  a  meritorious 
inventor,  if  his  patent  is  allowed  to  have  full  operation 
after  it  is  granted.  But  it  would  be  very  great  injustice 
to  hold,  that  any  delay  which  the  inventor  could  not  pre- 
vent should^  under  any  circumstances,  affect  the  validity 
of  his  patent.  (Dental  Vulcanite  Company  v.  Wetherbee,  3 
Fish.,  87.) 

And  if  an  earlier  application  by  the  inventor  is  for  the 
same  subject-matter  as  he  afterwards  patents,  and  if  such 
application  was  not  withdrawn  by  him,  but  the  delay  was 
caused  by  the  conduct  of  the  Commissioner  of  Patents 
in  refusing  to  grant  a  patent,  then  the  inventor  should 
23 


266  PROCEDURE  IN  THE  PATENT  OFFICE. 

not  be  considered  to  have  abandoned  his  invention  to 
the  public,  unless  he  abandoned  it  before  the  first  appli- 
cation. (Rich  v.  Lippincott,  2  Fish.,  1.) 

57.  ABANDONMENT  WITHIN  Two  YEARS. — The  mere  use 
or  sale  of  invention  within  two  years  will  not  alone  or  of 
itself  work  an  abandonment.  The  use  or  sale  must  be 
accompanied  by  some  declarations  or  acts,  going  to  es- 
tablish an  intention  on  the  part  of  the  inventor  to  give 
to  the  public  the  benefit  of  the  improvement.  But  the 
mere  expression  of  an  intention  not  to  take  out  a  patent, 
or  the  mere  declaration  of  intention  to  dedicate  an  in- 
vention to  the  public,  cannot  be  regarded  as  an  actual 
dedication.  Abandonment  or  dedication  is  in  the  nature 
of  a  forfeiture  of  a  right,  which  the  law  does  not  favor, 
and  it  should  be  made  out  beyond  all  reasonable  doubt. 
(Pitts  v.  Hall,  2  Blatchf.,  237.) 

In  the  case  of  Ransom  v.  The  Mayor  of  New  York,  Hall, 
J.,  charged  the  jury  as  follows: 

"If  the  plaintiffs  did  not  use  reasonable  diligence  to 
perfect  the  invention  patented  after  the  idea  of  it  was 
first  conceived,  and  in  the  meantime  other  persons  not 
only  conceived  the  idea,  but  perfected  the  invention  and 
practically  applied  it  to  public  use  before  the  invention 
of  the  plaintiffs  had  been  so  far  perfected  that  it  could  be 
applied  to  practical  use,  the  plaintiffs'  patent  is  void,  be- 
cause they  were  not  the  original  and  first  inventors  of 
the  thing  patented.  And  if  the  plaintiffs,  after  they  had 
perfected  their  invention,  unreasonably  delayed  their  ap- 
plication for  a  patent,  and  other  persons,  before  such  appli- 
cation was  made,  actually  perfected  and  applied  the  same 
invention  to  practical  use  and  gave  the  knowledge  there- 
of to  the  public,  and  the  plaintiffs,  after  the  knowledge 


REQUISITES  OF  THE  APPLICATION.  267 

of  such  subsequent  invention  or  discovery  and  its  public 
use,  failed  to  make  objection  and  to  apply  without  un- 
reasonable delay  for  a  patent  for  their  invention,  they 
cannot  sustain  their  patent,  because  they  failed  to  give 
the  public  the  consideration  for  the  grant  of  exclusive 
privileges,  upon  which  all  valid  patents  must  be  based; 
and  if  the  plaintiffs,  after  their  invention  was  perfected, 
knowingly  allowed  it  to  be  used  in  public  for  more  than 
two  years  before  they  applied  for  letters  patent,  it  is  con- 
clusive of  a  dedication  of  such  invention  to  the  public, 
and  their  patent  is  void.  And  so  also,  if  the  plaintiffs, 
after  their  invention  was  perfected,  acquiesced  In  its  use 
in  public  for  a  less  term  than  two  years  without  applying 
for  a  patent,  and  the  jury  shall  be  satisfied,  from  such 
acquiescence  and  other  facts  of  the  case,  that  the  plaint- 
iffs in  fact  abandoned  their  invention,  concluding  not  to 
patent,  but  to  dedicate  it  to  the  public  use,  they  could  not 
recall  such  dedication  or  defeat  such  abandonment  by  a 
subsequent  application  for  a  patent,  and  their  patent  is 
therefore  void."  (1  Fish.,  273.) 

58.  DELAY  UNIMPORTANT,  UNLESS  IT  AMOUNTS  TO  EVI- 
DENCE OF  ABANDONMENT. — The  statute  does  not  limit  any 
time  in  which  the  inventor  must  apply  for  a  patent,  nor 
does  it  declare  a  forfeiture  by  reason  of  any  delay.  De- 
lay, therefore,  is  unimportant,  unless  it  amounts  to  evi- 
dence of  the  abandonment  of  the  claim.  (Hildreth  v. 
Heath,  Appeal  Cases,  D.  (7.,  1841.) 

But,  although  merely  withholding  an  invention  from 
the  public  does  not  amount  to  abandonment,  it  may,  in 
connection  with  other  circumstances,  pile  up  difficulties, 
if  too  long  continued,  in  the  way  of  asserting  and  prov- 
ing priority  over  another  inventor  who  applies  for  a 


268  PROCEDURE  IN  THE  PATENT  OFFICE. 

patent.  (Babcock  v.  Degener,  MS.  Appeal  Cases,  D.  C., 
1859.) 

59.  CONTINUING  APPLICATION. — If  a  party  chooses  to 
withdraw  his  application  for  a  patent  and  pay  the  forfeit, 
intending  at  the  time  of  such  withdrawal  to  file  a  new 
petition,  and  accordingly  does  so,  the  two  petitions  are 
to  be  considered  as  parts  of  the  same  invention  and  as 
constituting  a  continuous  application  within  the  meaning 
of  the  laws.  (Godfrey  v.  Evans,  1  Wall.,  317.) 

And  where  the  patentee  made  public  use  and  sale  of 
his  invention  for  less  than  two  years  before  his  original 
application  for  a  patent,  but  subsequently,  and  more  than 
two  years  after  such  public  use  and  sale,  withdrew  such 
application  and  filed  a  second  one,  upon  which  a  patent, 
was  granted,  if  was  held,  that  the  continuity  of  the  appli- 
cation was  not  necessarily  destroyed,  and,  in  the  absence 
of  proof  of  abandonment  or  dedication,  the  patent  was  not 
avoided  by  reason  of  the  public  use  and  sale  for  more 
than  two  years  before  the  final  application.  (Howe  v. 
Newton,  2  Fish.,  531.) 

Where  a  patent  was  applied  for  May  3,  1856,  and  re- 
jected August  30, 1856,  amended  specification  filed  Sep- 
tember 22,  1856,  and  finally  rejected,  upon  appeal  to  the 
Commissioner,  June  15, 1857,  but  not  withdrawn,  a  new 
application  made  May  26,  1858,  and  a  patent  granted 
August  3, 1858:  held,  that  the  last  application  was  in  the 
nature  of  a  petition  for  review  of  the  previous  rulings 
and  related  back  to  the  prior  application ;  and  that  the 
action  of  the  Commissioner  was  not  original  and  inde- 
pendent, but  a  renewal  and  elongation  of  the  former 
proceedings  and  a  reversal  of  the  former  rejections.  To 
an  action  of  this  revisory  character  the  statute  imposes  no 


REQUISITES  OF  THE  APPLICATION.  269 

limitation,  and,  under  such  circumstances,  the  public  use 
to  avoid  the  patent  must  be  for  two  years  before  the  first 
application.  (Blandy  v.  Griffith,  3  Fish.,  609.) 

Where  an  application  was  withdrawn  and  the  with- 
drawal fee  received  back,  and  no  further  steps  were  taken 
for  eight  years,  when  a  new  application  was  filed,  and  in 
the  meantime  several  patents  had  been  granted  in  which 
the  invention  was  incorporated,  the  latter  application  was 
held  not  to  be  a  continuation  of  the  former,  and  was  re- 
jected. (J.  W.  Cochran  ex  parte,  Commissioners'  Decisions, 
1859,  p.  30.) 

After  the  withdrawal  of  an  application,  it  is  for  the 
Commissioner  to  determine  whether  a  second  one  is  filed 
within  a  reasonable  time,  so  as  to  constitute  a  continu- 
ance of  the  first.  (76.) 

And  if,  after  an  application  is  withdrawn,  another  is 
not  filed  in  two  years,  it  may  reasonably  be  presumed 
that  the  applicant  has  no  intention  of  renewing  it.  (Ib.} 

60.  THE  COMMISSIONER  MAY  REFUSE  A  PATENT  WHICH 
WOULD  BE  SUSTAINED  BY  THE  COURT  IF  ISSUED. — When  the 
patent  has  been  granted,  and  its  validity  is  called  in  ques- 
tion, a  court  may  so  far  respect  the  action  of  the  Com- 
missioner and  the  grant  of  the  Government  as  to  adopt 
a  rule  to  save  and  sustain  the  patent,  which  it  would  be 
very  unwise  and  unsafe  to  adopt  as  the  uniform  practice 
in  granting  patents.  The  courts  have  held  that  the  omis- 
sion of  the  oath  is  not  fatal.  (Crompton  v.  Belknap  Mills, 
3  Fish.,  536.)  And,  doubtless,  if  the  patent  were  actu- 
ally issued,  with  but  a  single  witness  to  the  specification, 
or  without  a  petition  or  the  payment  of  a  fee,  these  in- 
formalities would  not  avoid  the  patent;  and  yet  he  would 

be  a  bold  Commissioner  who  should  knowingly  proceed 
23* 


270 


PROCEDURE  IN  THE  PATENT  OFFICE. 


to  issue  patents  without  petition,  witnesses,  oath,  or  fees. 
In  Hogg  v.  Emerson  (6  Sow.,  437)  it  was  held,  that  in.- 
ventions  very  dissimilar  might  be  united  in  the  same 
patent;  and  in  Goodyear  v.  Wait  (3  Fish.,  242)  it  was 
held,  that  the  process  and  the  product  might  be  separa- 
ted, and  claimed  in  two  reissues,  the  court  remarking  that 
this  was  within  the  discretion  of  the  Commissioner.  So 
in  the  case  of  Suffolk  Company  v.  Hoyden,  it  was  held,  that 
an  invention  might  be  included  in  a  subsequent  patent 
which  was  described  in  a  preceding  one. 

Yet  in  all  these  cases  there  can  be  no  doubt  that  it  is 
within  the  discretion  of  the  Commissioner  to  say  that 
each  patent  shall  cover  but  one  invention,  or  that  the 
subject-matter  of  a  reissue  is  incapable  of  division,  or 
that  all  the  inventions,  or  parts  of  an  invention,  described 
in  an  application,  shall  be  included  in  one  patent,  or  in 
divisions  founded  upon  that  application.  (L.  J.  Atwood 
exparte,  Commissioners'  Decisions,  1869,  p.  100.) 


IV.  The  Applicant  and  Petition. 


SEC. 

61.  Application  to  be  by  way  of  pe- 

tition. 

62.  Application  by  actual  inventor. 

63.  Form  of  petition  by  a  sole  in- 

ventor. 

64.  Joint  inventors. 

65.  Kelations    subsisting    between 

joint  inventors.. 

66.  Form  of  petition  by  j  oint  invent- 

ors. 

67.  Assignment  before  patent. 

63.  Assignment    after    rejection  of 
application  valid. 


SEC. 

69.  Assignment  of   incomplete  in- 

vention. 

70.  Partial  assignment. 

71.  Office  to  be  requested  to  issue 

patent  to  assignee. 

72.  No  appeal  in  case  of  refusal. 

73.  Correspondence  in  the  name  of 

assignee. 

74.  Recording  assignment. 

75.  Stamp  required. 

76.  Legal  formalities. 

77.  Definition    of    the    terms    as- 

signee, grantee,  and  licensee. 


THE  APPLICANT  AND  PETITION. 


271 


SEC. 

78.  Form  of  petition  for  assignee. 

79.  Legal  representatives. 

80.  Form  of  petition  by  adminis- 

trator. 

81.  Form  of  petition  by  executor. 

82.  Attorneys. 

83.  Commissioner  may  refuse  to  rec- 

ognize an  attorney. 

84.  Correspondence  held  with  attor- 

ney only. 


SEO. 

85.  Clause  of  substitution. 

86.  Associate  attorney. 

87.  Revocation. 

88.  Stamp  required. 

89.  Form  of  petition,  with  power 

of  attorney. 

90.  Form  of  power  of  attorney. 

91.  Form  of  associate  power. 

92.  Form  of  revocation  of  power  of 

attorney. 


61.  APPLICATION  is  BY  WAY  OF  PETITION. — The  law  (ut 
infra,  p.  10,  §  26)  requires  an  inventor  who  desires  to 
obtain  a  patent  to  "make  application  in  writing  to  the 
Commissioner  of  Patents,"  &c.     This  application  in  writ- 
ing has,  from  the  origin  of  the  Government,  been  by  way 
of  petition,  generally  with  the  specification  annexed  and 
referred  to,  or  accompanied  by  the  specification,  filed  at 
the  same  time.     The  form  of  the  petition  is  not  material. 
When  filed,  it  is  to  be  presumed  to  adopt  the  specification 
or  schedule  filed  at  the  same  time,  and  to  ask  for  a  patent 
for  the  invention  therein  described.     (Curtis  on  Patents, 
§  271;  Hogg  v.  Emerson,  6  How.,  437,  480.) 

62.  THE  APPLICATION  MUST  BE  MADE  BY  THE  ACTUAL  IN- 
VENTOR, IF  ALIVE,  even  if  the  patent  is  to  issue  or  reissue 
to  an  assignee;  but,  where  the  inventor  is  dead,  the  appli- 
cation and  oath  may  be  made  by  the  executor  or  admin- 
istrator.    (Patent  Office  Rules,  July,  1870.) 

63.  FORM  OF  PETITION  BY  A  SOLE  INVENTOR. — 

To  the  Commissioner  of  Patents: 

Your  petitioner  prays  that  letters  patent  may  be  granted  to  him  for  the 
invention  set  forth  in  the  annexed  specification.  JOHN  SMITH. 

64.  JOINT  INVENTORS. — Joint  inventors  are  entitled  to 
a  joint  patent;  neither  can  claim  one  separately;  but 


272  PROCEDURE  IN  THE  PATENT  OFFICE. 

independent  inventors  of  separate  improvements  in  the 
same  machine  cannot  obtain  a  joint  patent  for  their  sep- 
arate inventions,  nor  does  the  fact  that  one  man  furnishes 
the  capital  and  the  other  makes  the  invention  entitle  them 
to  take  out  a  joint  patent.  (Patent  Office  Rules,  July,  1870.) 

A  joint  patent  may  well  be  granted  upon  a  joint  inven- 
tion. There  is  no  difficulty  in  supposing,  in  point  of  fact, 
that  a  complicated  invention  may  be  the  gradual  result 
of  the  combined  mental  operations  of  two  persons  acting 
together,  pari passu,  in  the  invention;  and  if  this  be  true, 
then,  as  neither  of  them  could  justly  claim  to  be  the  sole 
inventor  in  such  case,  it  must  follow  that  the  invention 
is  joint,  and  that  they  are  jointly  entitled  to  a  patent; 
but  a  joint  patent  cannot  be  sustained  upon  a  sole  inven- 
tion. (Barrett  v.Hall,  1  Mason,  472.) 

And  if  the  circumstances  are  such  as  to  show  that  two 
parties  contributed  to  an  invention,  so  as  to  make  them 
joint  inventors,  a  joint  patent  should  be  taken  out. 
(Thomas  v.  Weeks,  2  Paine,  103.) 

For  if  the  invention  patented,  as  in  a  joint  patent,  is 
the  sole  invention  of  one  of  the  patentees,  and  not  the 
joint  invention  of  both,  the  patent  is  void.  (Ransom  v. 
Mayor,  gc.,  of  New  York,  1  Fish.,  252.) 

One  of  two  or  more  joint  inventors  is  not  the  inventor, 
within  the  meaning  of  the  act;  and  if  he  applies  for  a 
patent  the  Commissioner  is  bound  to  refuse  it.  (Arnold 
v.  Bishop,  MS.  Appeal  Cases,  D.  C.,  1841.) 

The  man  who  reduces  to  practice  the  theory  of  another, 
who  assists  in  the  reduction  of  it  to  practice,  cannot  be 
considered  as  the  sole  inventor  of  the  machine;  and  if 
one  suggest  the  mode  of  operation  or  the  principle  of  a 
machine,  and  the  other  reduce  it  to  practice,  neither  can 


THE  APPLICANT  AND  PETITION.  273 

be  considered  as  the  sole  inventor,  but  the  invention  is 
joint.  (/&.) 

If  one  of  two  joint  inventors,  without  the  other  relin- 
quishing his  claim  to  a  joint  interest  in  the  patent  right, 
obtains  a  patent  in  his  own  name,  he  will  be  deemed 
guilty  of  a  fraud,  and  will,  in  equity,  be  considered  as 
the  trustee  of  the  other.  (Reutgen  v.  Kanowers,  1  Wash., 
171.) 

65.  RELATIONS  SUBSISTING  BETWEEN  JOINT  INVENTORS. 
In  the  case  of  joint  patentees,  where  no  agreement  or 
copartnership  exists,  the  relation  of  copartners  does  not 
result  from  their  connection  as  joint  patentees;  and  when 
one  joint  owner  of  a  patent  transfers  his  undivided  inter- 
est to  a  stranger,  the  assignee  does  not  become  the  part- 
ner of  his  co-proprietor.  In  both  cases  the  parties  inter- 
ested in  the  patent  are  simply  joint  owners,  or  tenants  in 
common,  of  the  rights  and  property  secured  by  the  pat- 
ent, and  their  rights,  powers,  and  duties,  as  respects  each 
other,  must  be  substantially  those  of  the  joint  owners  of 
a  chattel.  Part  owners  of  goods  and  chattels  are  either 
joint  owners  or  tenants  in  common,  each  having  a  dis- 
tinct, or  at  least  an  independent,  although  an  undivided, 
interest  in  the  property.  Neither  can  transfer  or  dispose 
of  the  whole  property;  nor  can  one  act  for  the  other  in 
relation  thereto,  but  merely  for  his  own  share,  and  to  the 
extent  of  his  own  several  rights  and  interest;  and  at 
common  law  the  one  had  no  action  of  account  against 
the  other,  from  his  share  of  the  profits  derived  from  the 
common  property.  (Pitts  v.  Hall,  3  Match/.,  201  206; 
Story  on  Partnership,  §  89.) 

One  tenant  in  common  has  as  good  a  right  to  use  and 

to  license  third  persons  to  use  the  thing  patented  as  the 

18 


274  PROCEDURE  IN  THE  PATENT  OFFICE. 

other  tenant  has.  Neither  can  come  into  a  court  of 
equity  and  assert  a  superior  equity,  unless  it  has  been 
created  by  some  contract  underlying  the  rights  which 
belong  to  them  as  tenants  in  common;  and,  no  such  con- 
tract existing,  one  tenant  in  common  cannot  enjoin  the 
other  from  use  and  sale.  (Clum  v.  Brewer,  2  Curtis  C.  C., 
506.) 

Some  agreement  becomes  necessary  to  enable  them  to 
work  the  invention  at  their  joint  expense  and  for  their 
joint  benefit.  (Parkhurstv.  Kinsman,  1  Blatchf.,  496.) 

If  the  partial  owner  is  not  a  wrong-doer  in  exercising 
the  rights  secured  by  the  patent,  no  property  has  been 
appropriated  which  belongs  to  the  other  proprietor  of 
the  patent,  and  the  ground  of  damages  fails.  That  this 
is  the  real  relation  of  the  parties,  would  seem  to  follow 
from  their  situation  as  tenants  in  common  of  a  right  to 
the  exercise  of  the  patent  privileges.  In  respect  to  the 
disposal  of  the  title  to  those  privileges,  they  stand  upon 
the  same  footing  as  tenants  in  common,  or  joint  owners 
of  other  chattels,  namely,  each  can  dispose  of  his  own 
share  only.  (Curtis  on  Patents,  §  190.) 

66.  FORM  OF  PETITION  BY  JOINT  INVENTORS. — 

To  the  Commissioner  of  Patents: 
Your  petitioners  pray  that  letters  patent  may  be  granted  to  them,  as 

joint  inventors,  for  the  invention  set  forth  in  the  annexed  specification. 

JOHN  SMITH, 
THOMAS  BBOWN. 

67.  ASSIGNMENT    BEFORE  PATENT. — Patents  may    be 
granted  and  issued  or  reissued  to  the  assignee  of  the 
inventor  or  discoverer,  the  assignment  thereof  being 
first  entered  of  record  in  the  Patent  Office;  but  in  such 
case  the  application  for  the  patent  shall  be  made  and  the 
specification  sworn  to  by  the  inventor  or  discoverer;  and 


THE  APPLICANT  AND  PETITION.  275 

also,  if  he  be  living,  in  case  of  an  application  for  reissue. 
(Act  of  July  8,  1870,  §  33.) 

The  patentee  is  not  necessarily  the  inventor;  for, 
whether  an  invention  is  or  is  not  assignable  at  common 
law  before  any  patent  for  it  has  been  obtained,  it  has 
been  deemed  expedient  to  make  it  so  assignable  by 
statute.  Accordingly,  provision  has  been  made  for  the 
issuing  of  a  patent  to  an  assignee  of  the  inventor,  pro- 
vided the  application  is  made  and  the  specification  duly 
sworn  to  by  the  inventor  himself,  and  the  assignment  is 
duly  recorded.  When  so  granted,  the  exclusive  interest 
is  vested  as  a  legal  estate  in  the  assignee,  who  thus  be- 
comes the  patentee  of  the  invention,  and  the  inventor 
himself  is  divested  of  the  legal  title;  but  the  assignee  of 
the  inventor,  who  has  become  such  before  the  patent  has 
issued,  does  not  become  the  holder  of  the  legal  title  to 
the  patent  until  it  has  issued,  although  he  becomes  the 
holder  of  a  right  to  obtain  the  patent.  ( Curtis  on  Patents, 
§§  168,  169;  Herbert  v.  Adams,  4  Mason,  15.) 

68.  ASSIGNMENT  AFTER  REJECTION  OF  APPLICATION  VAL- 
ID.— An  assignment  of  an  invention  before  patent  issued 
is  valid,  although  it  is  made  after  the  rejection  of  the 
assignor's  application  by  the  Commissioner,  and  after  his 
appeal  to  the  chief  justice  of  the  circuit  court  of  the  Dis- 
trict of  Columbia  from  such  decision.     (Gay  v.  Cornell, 
I£fatchf.,  509.) 

The  thing  to  be  assigned  is  not  the  mere  parchment, 
but  the  monopoly  conferred — the  right  of  property  which 
it  creates;  and  when  the  party  has  acquired  an  inchoate 
right,  an  assignment  of  it  is  legal.  (Gayler  v.  Wilder,  10 
How.,  493.) 

69.  ASSIGNMENT  OF  AN  INCOMPLETE  INVENTION  ONLY 


276  PROCEDUBE  IN  THE  PATENT  OFFICE. 

VALID  AS  A  CONTRACT. — But  the  statute  which  author- 
izes the  assignment  of  an  invention  before  patent  em- 
braces only  the  cases  of  perfected  or  completed  inven- 
tions. There  can,  properly  speaking,  be  no  assignment 
of  an  inchoate  or  incomplete  invention,  although  a  con- 
tract to  convey  a  future  invention  may  be  valid,  and  may 
be  enforced  by  a  bill  for  specific  performance.  The  legal 
title  can  pass  to  another  only  by  a  conveyance,  which 
operates  upon  the  thing  invented  after  it  has  become  ca- 
pable of  being  made  the  subject  of  an  application  for  a 
patent;  and  a  contract  to  convey  a  future  invention  can- 
not alone  authorize  a  patent  to  be  taken  by  the  party  in 
whose  favor  such  contract  was  intended  to  operate.  (Cur- 
tis on  Patents,  §  170;  tfesmitk  v.  Culvert,  1  Wood,  g  Mm.,  34.) 

70.  PARTIAL  ASSIGNMENT. — The  assignee  has  no  legal 
claim  to  the  patent  if  the  assignment  be  only  partial, 
though  the  part  excepted  is  small.     In  such  case  it  must 
be  issued  in  the  name  of  the  inventor,  and  be  held  by 
him  in  trust  for  the  use  of  the  assignee,  to  the  extent  of 
the  equities  he  has  by  virtue  of  his  contract.     (9  Opinions 
of  Attorneys  General,  403.) 

Nor  can  patents  issue  jointly  to  the  inventor  as  such 
and  to  the  assignee  of  a  partial  interest;  but  they  may 
issue  to  the  assignee  or  assignees  of  the  whole  interest. 
(4  Opinions  of  Attorneys  General,  401.) 

71.  PATENT  MAY  ISSUE  TO  INVENTOR  UNLESS  THE  OFFICE 
is  REQUESTED  TO  ISSUE  IT  TO  ASSIGNEE. — A  patent  will, 
upon  request,  issue  directly  to  the  assignee  or  assignees 
of  the  entire  interest  in  any  invention,  or  to  the  inventor 
and  the  assignee  jointly,  when  an  undivided  part  only 
of  the  entire  interest  has  been  conveyed.     (Patent  Office 
Rules,  July,  1870.) 


THE  APPLICANT  AND  PETITION.  277 

The  language  of  the  law  (ut  supra,  p.  9,  §  33)  is  "may  be 
granted  and  issued,"  not  "  shall  be,"  and  it  has  been  the 
constant  practice  of  the  office  to  issue  patents  to  the  in- 
ventor, unless  otherwise  specially  requested  by  him.  The 
mere  facts  of  assignment  and  record  do  not  impose  upon 
the  Commissioner  the  duty  of  issuing  the  letters  patent 
to  the  assignee  without  further  request,  and  the  omission 
to  do  so  is  not  therefore  a  mistake  on  his  part.  The 
rights  of  the  assignee  in  the  patent  are  precisely  the 
same,  whether  the  patent  be  issued  to  him  or  to  the  in- 
ventor, and  whether  it  issue  to  the  one  or  the  other  is  a 
matter  of  form  rather  than  of  substance.  (Havemeyer  ex 
parte,  Commissioners'  Decisions,  February  10, 1870.) 

72.  No  APPEAL  LIES  FROM  THE  REFUSAL  OF  THE  COM- 
MISSIONER TO  ISSUE  A  PATENT  TO  AN  ASSIGNEE,  and  a  man- 
date from  the  appellate  judge  requiring  it  will  not  be 
regarded.     The  jurisdiction  of  the  supreme  court  of  the 
District  of  Columbia  does  not  extend  to  the  ministerial 
acts  of  the  Commissioner.    ( Whilely  ex  parte,  Commission- 
ers' Decisions,  1869,  p.  79;  but  see  6  Wall.,  522.) 

73.  CORRESPONDENCE  IN  THE  NAME  OF  ASSIGNEE. — 
The  assignee  of  an  entire  interest  in  an  invention  is  en- 
titled to  hold  correspondence  with  the  office  to  the  ex- 
clusion of  the  inventor,  and  when  the  patent  is  to  issue 
in  the  name  of  the  assignee,  the  entire  correspondence 
should  be  in  his  name.     (Patent  Office  Rules,  July,  1870,) 

74.  ASSIGNMENT  MUST  BE  RECORDED  FIVE  DAYS  BEFORE 
ISSUE  OF  THE  PATENT. — In  every  case  where  a  patent 
issues  or  reissues  to  an  assignee,  the  assignment  must  be 
recorded  in  the  Patent  Office  at  least  five  days  before  the 
issue  of  the  patent,  and  the  specification  must  be  sworn 
to  by  the  inventor.     (Ib.) 

24 


278  PROCEDURE  IN  THE  PATENT  OFFICE. 

The  receipt  of  assignments  is  not  generally  acknowl- 
edged by  the  office.  They  will  be  recorded  in  their  turn 
within  a  few  days  after  their  reception,  and  then  trans- 
mitted to  the  persons  entitled  to  them.  (Ib.) 

75.  STAMP  REQUIRED. — A  five-cent  revenue  stamp  is 
required  for  each  sheet  or  piece  of  paper  on  which  an 
assignment,  grant,  or  license  may  be  written.     (Ib.] 

76.  LEGAL  FORMALITIES. — No  particular  form  of  words 
is  necessary  to  constitute  a  valid  assignment,  nor  need 
the  instrument  be  sealed,  witnessed,  or  acknowledged. 
(Ib.) 

The  statute  prescribes  no  particular  form  of  instru- 
ment. Any  instrument  in  writing  which  evinces  an 
intention  to  vest  the  whole  interest  in  the  assignee,  and 
to  authorize  him  to  take  the  patent  in  his  own  name,  is  a 
sufficient  conveyance.  (Curtis  on  Patents,  §  171.) 

An  assignee,  by  an  assignment  executed  before  pat- 
ent issued,  has  the  legal  title,  even  though  the  patent 
issued  to  the  inventory  (Gayler  v.  Wilder,  10  How.,  494.) 

77.  DEFINITION  OF  THE  TERMS  ASSIGNEE,  GRANTEE,  AND 
LICENSEE. — An  assignee  is  one  who  has  transferred  to  him, 
in  writing,  the  whole  interest  of  the  patent,  or  any  undi- 
vided part  of  such  whole  interest,  in  every  portion  of 
the  United  States. 

A  grantee  is  one  who  has  transferred  to  him,  in  writing, 
the  exclusive  right,  under  the  patent,  to  make  and  use, 
and  grant  to  others  to  make  and  use,  the  thing  patented, 
within  and  throughout  some  specified  portion  or  part  of 
the  United  States;  and  such  right  must  be  an  exclusive 
sectional  right,  excluding  the  patentee  therefrom. 

A  licensee  is  one  who,  in  writing  or  orally,  has  trans- 
ferred- to  him  a  less  interest  than  either  the  interest  in 


THE  APPLICANT  AND  PETITION.  279 

the  whole  patent  or  an  undivided  part  thereof,  or  an  ex- 
clusive sectional  interest. 

The  terms  assignee  and  grantee  have  separate  and  dis- 
tinct meanings,  and  are  not  synonymous.  (Potter  v.  Hol- 
land,l  I'M., 327.) 

78.  FORM  OP  PETITION  BY  AN  INVENTOR  FOR  AN  AS- 
SIGNEE.— 

To  the  Commissioner  of  Patents : 

Your  petitioner  prays  that  letters  patent  may  be  granted  to  Joel  Thomas, 
as  his  assignee,  for  the  invention  set  forth  in  the  annexed  specification. 

JAMES  GREENFIELD. 

79.  LEGAL  REPRESENTATIVES  MAY  MAKE  APPLICATION. — 
When  any  person,  having  made  any  new  invention  or 
discovery  for  which  a  patent  might  have  been  granted, 
dies  before  a  patent  is  granted,  the  right  of  applying  for 
and  obtaining  the  patent  shall  devolve  on  his  executor 
or  administrator,  in  trust  for  the  heirs  at  law  of  the  de- 
ceased, in  case  he  shall  have  died  intestate;  or  if  he  shall 
have  left  a  will,  disposing  of  the  same,  then  in  trust  for 
his  devisees,  in  as  full  manner  and  on  the  same  terms 
and  conditions  as  the  same  might  have  been  claimed  or 
enjoyed  by  him  in  his  lifetime;  and  when  the  application 
shall  be  made  by  such  legal  representatives,  the  oath  or 
affirmation  required  to  be  made  shall  be  so  varied  in  form 
that  it  can  be  made  by  them.     (Act  of  July  8, 1870,  §  34.) 

The  statute  contemplates  a  perfected  invention  or  dis- 
covery, for  which  the  inventor,  if  living,  could  have  taken 
out  a  patent  under  the  other  provisions  of  the  act.  (Cur- 
tis on  Patents,  177.) 

If  the  inventor  die  before  he  has  obtained  a  patent  for 
his  invention,  no  person  other  than  his  executor  or  ad- 
ministrator can  apply  for  a  patent  for  such  invention,  and 
the  patent  must  be  issued  to  such  person  in  trust  for  the 


280  PROCEDURE  IN  THE  PATENT  OFFICE. 

heirs  at  law  or  devisees  of  the  inventor.  It  need  not, 
however,  be  expressed  in  the  patent  that  it  is  issued  to 
such  executor  in  trust  for  those  entitled  to  it.  It  will  be 
sufficient  that  the  patent  set  forth  that  it  was  issued  to 
the  grantee  as  executor.  What  the  executor  does  in  re- 
lation to  the  property  of  the  devisor,  he  does  in  trust  for 
those  to  whom  such  property  is  given  by  the  will.  (Stim- 
son  v.  Rogers,  4  Blatchf.,333.) 

"When  the  patent  was  granted  by  the  Government  to 
C.  G.,  as  executor,  the  suffix  of  executor  signified  the 
trustee  character  in  which  he  assumed  to  act  and  in 
which  he  was  recognized  and  dealt  with  by  the  Commis- 
sioner. The  designation  and  the  trust  which  it  implied 
did  not  prevent  the  passage  of  the  legal  title  or  qualify 
the  estate  which  accompanied  it.  It  follows,  from  this 
view  of  the  subject,  that  the  grantee  can  sustain  a  suit 
on  the  patent  in  all  respects  as  if  he  had  been  designated 
in  it  as  trustee,  instead  of  executor.  (Rubber  Company  v. 
Goodyear,  9  Wallace,  792.) 

80.  FORM  OF  PETITION  BY  AN  ADMINISTRATOR. — 

To  the  Commissioner  of  Patents : 

Your  petitioner,  William  Davis,  administrator  of  the  estate  of  George 
Owen,  deceased,  (as  by  reference  to  the  duly  certified  copy  of  letters  of 
administration,  hereto  annexed,  will  more  fully  appear,)  prays  that  letters 
patent  may  be  granted  to  him  for  the  invention  of  the  said  George  Owens, 
set  forth  in  the  annexed  specification.  WILLIAM  DAVIS, 

Administrator,  &c. 

81.  FORM  OF  PETITION  BY  AN  EXECUTOR. — 

To  the  Commissioner  of  Patents  : 

Your  petitioner,  Samuel  Wilson,  executor  of  the  last  will  and  testament 
of  Henry  Somers,  deceased,  (as  by  reference  to  the  duly  certified  copy  of 
letters  testamentary,  hereto  annexed,  will  more  fully  appear,)  prays  that 
letters  patent  may  be  granted  to  him  for  the  invention  of  the  said  Henry 
Somers,  set  forth  in  the  annexed  specification.  SAMUEL  WILSON, 

Executor,  &c. 


THE  APPLICANT  AND  PETITION.  281 

82.  ATTORNEYS. — Any  person  of  intelligence  and  good 
moral  character  may  appear  as  the  attorney  in  fact  or 
agent  of  an  applicant  upon  riling  a  proper  power  of  at- 
torney.    As  the  value  of  patents  depends  largely  upon 
the  careful  preparation  of  the  specification  and  claims, 
the  assistance  of  competent  counsel  will,  in  most  cases, 
be  of  advantage  to  the  applicant,  but  the  value  of  their 
services  will  be  proportioned  to  their  skill  and  honesty. 
So  many  persons  have  entered  this  profession  of  late 
years  without  experience  that  too  much  care  cannot  be 
exercised  in  the  selection  of  a  competent  man.     The 
office  cannot  assume  responsibility  for  the  acts  of  attor- 
neys, nor  can  it  assist  applicants  in  making  a  selection. 
It  will,  however,  be  a  safe  rule  to  distrust  those  who 
boast  of  the  possession  of  special  and  peculiar  facilities 
in  the  office  for  procuring  patents  in  a  shorter  time  or 
with  more  extended  claims  than  others.     (Patent  Office 
Buks,  July  8, 1870.) 

83.  COMMISSIONER  MAY  REFUSE  TO  RECOGNIZE  AN  AT- 
TORNEY.— For  gross  misconduct  the  Commissioner  may 
refuse  to  recognize  any  person  as  a  patent  agent,  either 
generally  or  in  any  particular  case;  but  the  reasons  for 
such  refusal  shall  be  duly  recorded,  and  be  subject  to  the 
approval  of  the  Secretary  of  the  Interior.     ( Act  of  July 
8,  1870,  §  17.) 

And  for  lesser  offenses  attorneys  may  be  refused  the 
privilege  of  oral  interviews,  and  be  required  to  transact 
all  business  with  the  office  in  writing.  (Patent  Office  Rules, 
July,  1870.) 

84.  CORRESPONDENCE  HELD  WITH  ATTORNEY  ONLY.— 
When  an  agent  has  filed  his  power  of  attorney,  duly  ex- 
ecuted, the  correspondence  will,  in  ordinary  cases,  be 

24* 


282  PROCEDURE  IN  THE  PATENT  OFFICE. 

held  with  him  only.  A  double  correspondence  with  him 
and  his  principal,  if  generally  allowed,  would  largely 
increase  the  labor  of  the  office.  (Ib.} 

85..  CLAUSE  OF  SUBSTITUTION. — Powers  of  attorney 
must  contain  a  clause  of  substitution,  to  authorize  the 
attorney  to  substitute  for,  or  associate  with,  himself  a 
second  agent;  but  such  powers  will  not  authorize  the 
second  agent  to  appoint  a  third.  (Ib.} 

86.  ASSOCIATE  ATTORNEY. — A  power  of  attorney  must 
be  filed  in  every  case,  both  by  original  and  associate  at- 
torneys, before  such  attorney  will  be  allowed  to  inspect 
papers  or  take  action  of  any  kind;  but  a  revenue  stamp 
need  be  affixed  to  original  powers  only.     (Ib.} 

87.  REVOCATION. — If  the  principal  becomes  dissatisfied, 
he  must  revoke  his  power  of  attorney  and  notify  the 
office,  which  will  then  communicate  with  him.     (Ib.} 

88.  STAMP  REQUIRED. — A  stamp  of  the  value  of  fifty 
cents  is  required  upon  each  power  of  attorney  authoriz- 
ing an  attorney  or  agent  to  transact  business  with  this 
office  relative  to  an  application  for  a  patent,  reissue,  or 
extension.     The  person  using  or  affixing  the  stamp  must 
cancel  the  same,  by  writing  thereupon  the  initials  of  his 
name  and  the  date.     (Ib.} 

89.  FORM  OF  PETITION,  WITH  POWER  OF  ATTORNEY. — 

To  the  Commissioner  of  Patents : 

Your  petitioner  prays  that  letters  patent  may  be  granted  to  him  for  the 
invention  set  forth  in  the  annexed  specification ;  and  he  hereby  appoints 
Solomon  Sharp,  of  the  city  of  Washington,  District  of  Columbia,  his  attor- 
ney, with  full  power  of  substitution  and  revocation,  to  prosecute  this  appli- 
cation, to  make  alterations  and  amendments  therein,  to  receive  the  patent, 
and  to  transact  all  business  in  the  Patent  Office  connected  herewith. 
[50  cent  revenue  stamp.]  PETER  PENDENT. 

[If  the  power  of  attorney  be  given  at  any  time  other 


THE  SPECIFICATION. 


283 


than  that  of  making  application  for  patent,  it  will  be  in 
substantially  the  following  form :] 

90.  FORM  OF  POWER  OF  ATTORNEY. — 

To  the  Commissioner  of  Patents  : 

The  undersigned  having,  on  or  about  the  20th  day  of  July,  1859,  made  ap- 
plication for  letters  patent  for  an  improvement  in  a  horse-power,  hereby 
appoints  Lawrence  Legal,  of  the  city  of  Washington,  District  of  Columbia, 
his  attorney,  with  full  power  of  substitution  and  revocation,  to  prosecute 
said  application,  to  make  alterations  and  amendments  therein,  to  receive 
the  patent,  and  to  transact  all  business  in  the  Patent  Office  connected 
therewith. 

Signed  at  Brooklyn,  county  of  Kings,  and  State  of  New  York,  this  27th 
day  of  July,  A.  D.  1869.  CHARLES  CAUTIOUS. 

[50  cent  revenue  stamp.] 

91.  FORM  OF  ASSOCIATE  POWER. — 

To  the  Commissioner  of  Patents  : 

SIE  :  Will  you  please  recognize  Solomon  Sharp,  of  Washington,  D.  C.,  as 
my  agent  and  associate  in  examining  and  amending  the  application  of  Pe- 
ter Pendant  for  an  improvement  in  horse-power,  filed  April  23,  1870,^and 
address  all  communications  in  relation  thereto  to  him.  C.  P.  RUSSELL. 

92.  FORM  OF  REVOCATION  OF  POWER  OF  ATTORNEY. — 

The  undersigned  having,  on  or  about  the  26th  day  of  December,  1867, 
appointed  Thomas  Tardy,  of  the  city  of  New  York,  New  York,  his  attor- 
ney, to  prosecute  application  for  letters  patent  for  an  improvement  in  the 
running-gear  of  wagons,  hereby  revokes  the  power  of  attorney  then  given. 

Signed  at  Richmond,  Virginia,  this  21st  day  of  July,  1869. 

RALPH  WHITMAN. 

V.  The  Specification. 


SEC. 

93.  Specification    and    drawing    a 

part  of  the  patent. 

94.  Statute  requisites. 

95.  Rules  of  the  Patent  Office  con- 

cerning the  specification. 

96.  Patent  and  specification     con- 

strued together. 


SEC. 

97.  Object  of  the  specification  two- 

fold. 

98.  Specification  addressed  to  per- 

sons of  competent  skill. 

99.  What  need  not  be  stated. 

100.  Variable  proportions  may   la 
stated. 


PROCEDURE  IN  THE  PATENT  OFFICE. 


SEC. 

101.  Office  of  the  claim. 

102.  Language  employed. 

103.  Strictures  upon  the  words  "  sub- 

stantially as  described,"  "  as 
herein  set  forth,"  and  the  like. 

104.  How  improvements  should  be 

set  forth. 

105.  Implication  in  regard  to  parts 

not  claimed. 

106.  Invention  should   not  be  de- 

scribed as  a  mode,  function, 
or  abstract  principle. 

107.  Vagueness  and  ambiguity  of 

description. 


SEC. 

108.  Fraudulent  concealment,  false 

suggestion. 

109.  Descriptive  title. 

110.  Order  of  the  specification. 

111.  Object  of  the  invention. 

112.  Description  of  detail. 

113.  The  claim. 

114.  Form  of  specification  for  a  ma- 

chine by  a  sole  inventor. 

115.  Form   of   specification    for    a 

process  by  joint  inventors. 

116.  Form  of  specification  of  a  com- 

position of  matter  by  an  ad- 
ministrator. 


93.  SPECIFICATION  AND  DRAWING  A  PART  OF  THE  PAT- 
ENT.— A  copy  of  the  specifications  and  of  the  drawings 
shall  be  annexed  to  the  patent,  and  be  a  part  thereof. 
(ActofJulyS,  1870,  §  22.) 

94.  STATUTE  REQUISITES  OF  THE  SPECIFICATION. — Be- 
fore any  inventor  or  discoverer  shall  receive  a  patent  for 
his  invention  or  discovery  he  shall   make  application 
therefor,  in  writing,  to  the  Commissioner,  and  shall  file 
in  the  Patent  Office  a  written  description  of  the  same, 
and  of  the  manner  and  process  of  making,  constructing, 
compounding,  and  using  it,  in  such  full,  clear,  concise, 
and  exact  terms  as  to  enable  any  person  skilled  in  the 
art  or  science  to  which  it  appertains,  or  with  which  it  is 
most  nearly  connected,  to  make,  construct,  compound, 
and  use  the  same;  and,  in  case  of  a  machine,  he  shall 
explain  the  principle  thereof,  and  the  best  mode  in  which 
he  has  contemplated  applying  that  principle,  so  as  to  dis- 
tinguish it  from  other  inventions;  and  he  shall  particu- 
larly point  out  and  distinctly  claim  the  part,  improve- 


THE  SPECIFICATION.  285 

ment,  or  combination  which  he  claims  as  his  invention 
or  discovery;  and  said  specification  and  claim  shall  be 
signed  by  the  inventor  and  attested  by  two  witnesses. 
(Act  of  JulyS,  1870,  §  26.) 

95.  RULES  OF  THE  PATENT  OFFICE  CONCERNING  THE 
SPECIFICATION. — The  applicant  must  set  forth  in  his  spec- 
ification the  precise  invention  for  which  he  claims  a  pat- 
ent; and  in  all  applications  for  mere  improvements,  the 
specification  must  distinguish  between  what  is  admitted 
to  be  old  arid  what  is  described  and  claimed  to  be  the 
improvement,  so  that  the  office  and  the  public  may  un- 
derstand exactly  for  what  the  patent  is  granted. 

Two  or  more  distinct  and  separate  inventions  may  not 
be  claimed  in  one  application;  but  where  several  inven- 
tions are  necessarily  connected  each  with  the  other,  they 
may  be  so  claimed. 

If  more  than  one  invention  is  claimed  in  a  single  appli- 
cation, and  they  are  found  to  be  of  such  a  nature  that 
a  single  patent  may  not  be  issued  to  cover  the  whole,  the 
office  requires  the  inventor  to  divide  the  application  into 
separate  applications,  or  to  confine  the  description  and 
claim  to  whichever  invention  he  may  elect. 

The  specification  should  describe  the  drawings,  (where 
there  are  drawings,)  and  refer  by  letters  and  figures  to 
the  different  parts;  and,  having  fully  described  the  art, 
machine,  manufacture,  composition,  or  improvement,  it 
should  particularly  specify  and  point  out  the  part,  im- 
provement, or  combination  which  is  claimed  as  the  in- 
vention or  discovery. 

The  specification  must  be  signed  by  the  inventor,  or  by 
his  executor  or  administrator,  and  must  be  attested  by 
two  witnesses.  Full  names  must  be  given,  and  all  names, 


286  PROCEDURE  IN  THE  PATENT  OFFICE. 

whether  of  applicant  or  witnesses,  must  be  legibly  writ- 
ten.    (Patent  Office  Rules,  July,  1870.) 

96.  PATENT  AND  SPECIFICATION  CONSTRUED  TOGETHER. — 
The  specification,  under  our  law,  occupies  a  relation  to 
the  patent  somewhat  different  to  the  rule  in  England. 
In  England  the  specification  does  not  form  a  part  of  the 
patent,  so  as  to  control  its  construction ;  but  the  rights 
of  the  inventor  are  made  to  depend  upon  the  description 
of  his  invention  inserted  in  the  title  of  the  patent,  and 
cannot  be  helped  by  the  specification,  the  oifice  of  which 
is  to  describe  the  mode  of  constructing,  using,  or  com- 
pounding the  invention  mentioned  in  the  patent.     But 
in  the  United  States  the  invention  is  drawn  up  and  filed 
before  the  patent  is  granted,  and  is  referred  to  in  the 
patent  itself,  a  copy  being  annexed.     It  is,  therefore,  a 
settled  rule  in  this  country  that  the  patent  and  specifica- 
tion are  to  be  construed  together,  in  order  to  ascertain 
the  subject-matter  of  the  invention,  and  that  the  specifi- 
cation may  control  the  generality  of  the  terms  of  the 
patent  of  which  it  forms  a  part.     In  like  manner,  draw- 
ings annexed  to  a  specification,  in  compliance  with  the 
statute,  are  held  to  form  a  part  of  it,  and  are  to  be  re- 
garded in  the  construction  of  the  whole  instrument;  and, 
when  the  term  patent  is  used,  it  is  understood  to  include 
the  specification  and  drawings  annexed  to  it.     (Curtis  on 
Patents,  §  221;    Phillips  on  Patents,  223;   Godson  on  Pat- 
ents, 108;  Hogg  v.  Emerson,  6  How.,  437,  479.) 

The  whole  patent,  including  the  specification  and  draw- 
ings, is  to  be  taken  into  consideration ;  but  we  look  to 
them  only  for  the  purpose  of  putting  a  proper  construc- 
tion upon  the  claim.)  Pitts  v.  Wemple,  2  Fish.,  10.)  . 

97.  OBJECT  OF  THE  SPECIFICATION  TWO-FOLD. — The  object 


THE  SPECIFICATION.  287 

of  the  provisions  of  the  statute  requiring  an  inventor  to 
describe  his  invention  in  as  full,  clear,  and  exact  terms, 
as  to  enable  a  skillful  person  to  construct  it,  is  two-fold: 
first,  that  when  the  term  has  expired,  and  the  invention 
becomes  public  property,  such  means  of  information  will 
be  accessible  through  the  Patent  Office  as  to  enable  others 
to  avail  themselves  of  its  benefits;  and,  second,  that  while 
the  patent  is  in  force  others  may  be  informed  of  the  pre- 
cise claim  of  the  patentee,  and  not  ignorantly  infringe 
his  exclusive  rights.  (Parker  v.  Stiles,  5  McLean,  55.) 

98.  SPECIFICATION  ADDRESSED  TO  PERSONS  OF  COMPETENT 
SKILL. — The  law  does  not  require  that  the  specification 
should  contain  an  explanation  level  with  the  capacity  of 
every  one,  which  would  often  be  impossible.  It  allows 
the  patentee  to  address  himself  to  persons  of  competent 
skill  in  the  art,  and  it  requires  him  to  use  such  full,  clear, 
and  exact  terms  as  will  enable  that  class  of  persons  to 
reproduce  the  thing  described  from  the  description  itself. 
If,  therefore,  clear  ideas  are  conveyed  to  men  of  me- 
chanical skill  in  the  subject-matter,  by  which  they  could 
make  or  direct  the  making  of  the  machine  by  following 
the  directions  given,  the  specification  is  good  within  the 
acts  of  Congress.  (Curtis  on  Patents,  §  253;  Lowell  v. 
Lewis,  1  Mason,  182;  Whitney  v.  Emmett,  Bald.,  319.) 

In  all  descriptions  of  patented  machines  something 
must  be  left  to  the  judgment  and  discretion  of  the  me- 
chanic who  constructs  the  machine.  It  will,  perhaps, 
rarely  happen,  even  when  the  utmost  vigilance  and  care 
are  observed,  that  the  machine  or  structure  will  be  so 
accurately  described  as  that  the  description  can  be  liter- 
ally and  strictly  followed  in  every  particular.  The  skill- 
ful mechanic  will  see  that  in  some  particulars  there  is 


288  PROCEDURE  IN  THE  PATENT  OFFICE. 

some  vagueness,  and  some  discretion  is  required;  but  that 
fault  will  not  invalidate  the  patent.  (Swift  v.  Whisen,  3 
Fish.,  343.) 

The  persons  whose  judgment  is  appealed  to  are  not 
those  who  possess  the  highest  degree  of  skill  or  knowl- 
edge in  the  particular  art  or  science  to  which  the  subject- 
matter  belongs,  nor  are  they  day  laborers;  they  are  prac- 
tical workmen,  or  persons  of  reasonably  competent  skill 
in  the  particular  art,  science,  or  branch  of  industry  to 
which  the  invention  relates. 

The  description  should  be  accommodated  to  the  com- 
prehension of  persons  of  competent  skill  and  knowledge, 
without  taxing  their  genius  or  inventive  powers,  and 
should  specify  the  means  used  so  fully  and  exactly  as  to 
enable  them,  by  using  the  means  specified,  without  ad- 
dition or  subtraction,  to  produce  the  result  described. 
( Gray  v.  James,  Pet.  C.  C. ,  401 ;  0  'Reilly  v.  Morse,  15  How., 
119.) 

99.  WHAT  NEED  NOT  BE  STATED. — The  specification 
need  not  describe  that  which  is  within  the  ordinary 
knowledge  of  any  workman  having  a  competent  knowl- 
edge of  the  work,  who  may  be  employed  to  construct 
the  machine,  nor  is  it  necessary  for  the  specification  to 
describe  the  mode  of  making  everything  which  is  used, 
or  detail  known  processes,  or  explain  the  terms  appro- 
priate to  the  particular  art,  or  science,  or  branch  of  in- 
dustry to  which  the  invention  belongs.  (Page  v.  Ferry, 
1  Fish.,  298;  Cnrtis  on  Patents,  §  260.) 

Nor  is  it  necessary  in  the  description  of  a  machine  to 
state  of  what  material  every  part  should  be  made,  un- 
less a  particular  material  be  essential  to  its  successful 
operation.  (Brooks  v.  Bwknell,  3  McLean,  250,  261.) 


THE  SPECIFICATION.  289 

Where  the  invention  consists  of  a  machine,  the  in- 
ventor must  fully  explain  the  principle  and  the  several 
modes  in  which  he  has  contemplated  the  application  of 
that  principle,  by  which  it  may  be  distinguished  from 
other  inventions ;  but  he  is  not  required  to  specify  such 
well-known  substitutes  for  any  particular  element  of  his 
invention  as  any  constructor  acquainted  with  the  art 
fully  understands  is  usually  employed  for  the  accom- 
plishment of  the  same  function.  (Union  Sugar  Refinery 
v.  Matthiessen,  2  Fish.,  600.) 

In  the  case  of  C.  Rubens  ex  parte,  (Commissioners'  De- 
cisions, May  28,  1870,)  the  Commissioner  says :  "  The 
mechanism  employed  by  applicant  is  not  new,  aside  from 
the  combination  of  it  with  a  spring  dispensing  with  a 
fixed  stop,  and  such  a  spring  is  covered  by  the  letters 
patent  of  Adrian  Philippe.  Moreover,  no  such  spring 
or  mechanism  is  shown  in  the  drawings  of  applicant  or 
set  forth  in  his  specification,  except  by  the  reference  to 
Adrian  Philippe's  patent.  The  language  of  the  refer- 
ence is:  'A  mechanism,  such,  for  instance,  as  shown  in 
the  patent  of  Adrian  Philippe,  of  July  5,  1864,  is  used.' 

"  Two  points  have  arisen  in  the  discussion  of  this  case 
which  are  worthy  of  consideration :  First,  whether  the 
patented  invention  of  another  can  form  an  element  of  a 
legitimate  combination;  and,  second,  whether  a  legiti- 
mate combination  can  be  claimed  which  includes  an  ele- 
ment not  shown  or  specifically  described  in  the  specifica- 
tion and  drawings.  The  second  question  may  be  answered 
in  the  affirmative  with  entire  confidence.  A  well-known 
form  of  mechanism  may  be  incorporated  into  and  become 
an  element  of  a  legitimate  combination  without  a  de- 
tailed description.  The  specification  is  addressed  to 
25 


290  PROCEDURE  IN  THE  PATENT  OFFICE. 

those  skilled  in  the  art  to  which  the  invention  relates, 
and  things  well  known  to  them  .need  not  be  described, 
because  the  general  public  may  not  fully  understand  the 
details  of  the  invention.  The  first  point  presents  more 
difficulty.  Undoubtedly  there  are  many  cases  in  which 
it  would  prove  a  great  hardship  to  permit  patents  to  issue 
for  every  combination  in  which  an  improvement  pre- 
viously patented  might  form  a  part.  Instances  are  given 
in  the  cases  James  Murphy,  ( Commissioners'  Decisions,  1869, 
p.  24,)  and  Nathan Martz,  (Commissioners' Decisions,  1870, 
p.  18.)  If,  for  example,  an  improvement  be  made  in  a 
feed-water  heater,  it  would  be  an  abuse  of  the  doctrine 
of  combination  to  apply  it  in  turn  to  every  species  of 
boiler,  and  claim  a  patent  upon  every  variation.  In 
this  way  the  patentee  of  the  heater  might  be  absolutely 
prevented  from  applying  it  to  any  boiler  whatsoever. 

"  There  is,  however,  another  class  of  combinations, 
into  which  patented  improvements  may  enter  as  ele- 
ments, and  of  which  they  may  form  legitimate  members. 
Such  cases  are  those  in  which  the  patented  device  is 
itself  improved  or  made  more  effective  by  the  combina- 
tion, or  in  which  a  new  whole  is  produced  by  the  union, 
or  in  which  the  combination  does  not  lie  in  the  legiti- 
mate and  ordinary  use  of  the  patented  improvement, 
but  is  so  far  out  of  the  track  of  it  as  not  to  be  obviously 
suggested  by  it,  or  in  which  the  additional  element  is 
itself  new,  and  could  not  have  been,  in  the  contemplar 
tion  of  the  patentee,  among  the  modes  of  using  or  apply- 
ing his  improvement." 

100.  IN  A  SPECIFICATION  FOR  A  COMPOSITION  OF  MATTER 
VARIABLE  PROPORTIONS  MAY  BE  STATED. — If  in  his  speci- 
fication the  patentee  gives  a  certain  proportion  as  the 


THE  SPECIFICATION.  291 

general  rule  applicable  to  the  ordinary  state  of  ingre- 
dients, he  may,  without  risk  of  having  his  patent  de- 
clared void  by  the  court  for  vagueness  and  uncertainty, 
state  other  and  variable  proportions  as  exceptions  to  the 
rule,  applicable  to  the  varying  states  of  the  ingredients, 
although  the  precise  proportions  adapted  to  a  given  state 
of  the  ingredients,  other  than  the  usual  state,  can  only 
be  ascertained  by  computing  it  from  the  general  rule, 
after  the  particular  state  of  the  ingredients  is  ascertained. 
Curtis  on  Patents,  §  259;  Wood  v.  Underbill,  5  How.,  1,  3, 4.) 

101.  THE  CLAIM  is  NOT  INTENDED  TO  AID  THE  DESCRIP- 
TION, BUT  TO  ASCERTAIN  THE  EXTENT  OF  WHAT  is  CLAIMED 
AS  NEW. — The  claim  is  not  intended  to  be  any  descrip- 
tion of  the  rn^ans  by  which  the  invention  is  to  be  per- 
formed, but  is  introduced  for  the  security  of  the  patentee, 
that  he  may  not  be  supposed  to  claim  more  than  he  can 
support  as  an  invention.  It  is  introduced  lest,  in  de- 
scribing and  ascertaining  the  nature  of  his  invention  and 
by  what  means  the  same  is  to  be  performed,  the  patentee 
should  have  inadvertently  described  something  which  is 
not  new,  in  order  to  render  his  description  of  the  im- 
provement intelligible.  (Curtis  on  Patents,  §  227.) 

A  proposition  to  limit  the  claim  made  by  the  patentee 
to  the  Commissioner  does  not  bind  the  patentee.  (Pike 
v.  Potter,  3  Fish.,  55) 

In  the  case  of  Owen  Dorsey  ex  parte,  (Commissioners' 
Decisions,  March,  1870,)  the  Commissioner  says :  "  It  is 
yet  more  strenuously  urged  that  the  terms  in  which  the 
invention  is  defined  are  such  as  to  bring  it  clearly  in 
conflict  with  pre-existing  machines.  This  objection  de- 
rives much  of  its  force  from  a  misapprehension  of  the 
proper  office  of  what  are  usually  called  '  the  claims '  in  a 


292  PROCEDURE  IN  THE  PATENT  OFFICE. 

patent.  It  is  quite  commonly  supposed  that  they  con- 
stitute, as  it  were,  an  instrument  by  itself,  distinct  from 
the  descriptive  part,  and  are  to  be  construed  irrespective 
of  the  rest,  unless  express  reference  is  made  to  it;  that 
one  portion  is  intended  to  make  known  how  the  inven- 
tion is  to  be  practiced,  the  other  by  itself  to  define  and 
limit  the  monopoly.  It  has  been  even  held  that  the 
patent  law  expressly  requires  a  distinct  section  for  that 
purpose  in  the  grant.  Such  is  not  the  import  of  the 
statute.  The  clause  in  it  which  is  relied  on  is  nothing 
more  than  an  embodiment  of  the  rule  of  the  English 
courts,  requiring  that  the  patentee  should  point  out  in 
his  specification  what  is  new,  and  distinguish  it  from 
what  is  old.  But  the  statute  prescribes  no  mode  of  doing 
this.  It  is  not  unusual  for  British  patents  to  dispense 
with  any  such  section.  It  would  clearly  be  sufficient  in 
this  country  if  each  new  device  is  declared  to  be  such 
in  the  text  where  it  is  described.  It  is  more  convenient 
to  do  this,  no  doubt,  in  one  passage  at  the  end.  But  in 
so  doing  the  object  is  merely  to  designate  those,  among 
the  things  which  have  been  described,  which  the  in- 
ventor claims  were  originated  by  him ;  not  to  formally 
describe  them  anew  or  define  them  otherwise  than  suffi- 
ciently to  indicate  which,  among  the  articles  described, 
are  novelties.  Accordingly,  in  Kay  v.  Marshall,  (2  W.  P. 
(7.,)  a  strong  intimation  was  given  that  nothing  should  be 
embraced  in  a  claim  which  had  not  been  previously  set 
forth.  And  the  cases  are  numerous  in  which  the  claim- 
ing passages  have  been  interpreted  and  controlled  by  the 
descriptive  portion  of  the  specification,  even  when  not 
referred  to."  ( Wyethv.  Stone,  1  Story,  273 ;  Stonev.  Sj)rague, 
16., 270;  Ryanv.  Goodwin^  &m?2.,514;  Davoll  v.  Brown, 


THE  SPECIFICATION.  293 

1  Wood.  £  Mn.,  53;    Whitney  v.  Emmelt,  Bald.,  303,  315  ; 
Ames  v.  Howard,  1  Sumn,  482.) 

102.  LANGUAGE  EMPLOYED. — It  is  not  necessary  that  the 
language  employed  should  be  technical  or  scientifically 
accurate,  although  the  patentee  is  bound  to  describe, 
with  reasonable  certainty,  in  what  bis  invention  consists 
and  what  his  particular  claim  is.  but  he  is  not  bound  to 
use  any  precise  form  of  words;  and  if  the  terms  made 
use  of  will  enable  the  court  to  ascertain  clearly,  by  fair 
interpretation,  what  the  party  intends  to  claim,  an  inac- 
curacy or  imperfection  in  the  language  will  not  vitiate 
the  specification.     ( Wyeth  v.  Stone,  1 Story,  271,  286.) 

The  nature  of  a  process  for  which  a  patent  is  asked 
must  be  learned  from  the  specification,  and  not  from  the 
explanations  aside  from  it.  (Lowry  exparte,  Commission- 
ers' Decisions,  1869,  p.  85.) 

103.  STRICTURES  UPON  THE  WORDS  "SUBSTANTIALLY  AS 
DESCRIBED,"  "AS  HEREIN  SET  FORTH,"  AND  THE  LIKE. — 
The  practice  of  allowing  claims  for  inventions  which  can 
only  be  distinguished  from  those  previously  invented  or 
patented  by  the  construction  to  be  given  to  such  words 
as  "substantially  as  described,"  "as  herein  set  forth," 
&c.,  cannot  be  too  strongly  condemned.    The  claim  should 
state  all  the  elements  of  the  combination  intended  to  be 
patentecl,  and  if  the  parts  are  the  same  in  name  and  num- 
ber as  in  some  prior  machine,  and  the  improvement  con- 
sists in  some  modification  of  one  or  more  of  those  parts, 
the  claim  should  distinctly  state  that  modification.     It 
should  not  be  concealed  in  ambiguous  phrases.     The 
words  "substantially  as  described,"  and  the  like,  have  no 
fixed  legal  meaning.     They  may  serve  to  expand  or  con- 
tract the  claim.     In  general  they  are  employed  for  the 

25* 


294  PROCEDURE  IN  THE  PATENT  OFFICE. 

latter  purpose,  so  that  a  claim  may  appear  to  be  broad 
upon  its  face,  which  in  truth,  by  virtue  of  this  myste- 
rious phraseology,  is  exceedingly  narrow.  Sometimes 
they  are  added  by  inventors  as  a  matter  of  course,  by 
way  of  rounding  off  the  claim,  and  have  no  particular 
meaning;  and  again,  they  are  intended  to  signify  that 
the  patentee  claims  that  which  he  describes  and  every- 
thing substantially  like  it.  They  are,  at  the  best,  ambig- 
uous and  dangerous  phrases,  and,  however  else  they  may 
be  used,  they  must  not  be  employed  in  the  granting  of 
letters  patent  to  make  a  claim  good  that  without  them 
would  be  bad  and  unpatentable.  (Charles  Rubens  ex  parte, 
Commissioners'  Decisions,  1869,  p.  107.) 

In  the  case  of  Sickles  v.  Falls  Company  the  court  say : 
"The  patentee,  after  describing  the  nature  of  his  im- 
provement and  the  machinery  for  effecting  it,  claims  as 
follows  :  '  Imparting  a  co-existing  movement  to  two  re- 
ciprocating catch-pieces  in  the  operation  of  trip  cut-off 
valves.'  The  claim,  in  terms,  is  for  an  effect — for  an 
effect  or  function — and,  therefore,  not  patentable."  (2 
Fish.,  202.) 

A  claim  for  "  constructing  and  arranging  the  spring 
catches,  to  cause  the  attachment  of  the  lamp  to  the  lan- 
tern, by  the  operation  of  pressing  the  lantern  down  upon 
the  spring  catches,"  is  not  the  subject  of  a  patent,  but  a 
mere  result  from  the  arrangement  and  combination  of 
the  parts.  (Sangster  v.  Miller,  2  Fish.,  563.) 

In  the  case  of  Simonds  ex  parte,  (Commissioners'  Decis- 
ions, March  14,  1870,)  the  Commissioner  says:  "Appli- 
cant claims,  '  producing  in  cutting  presses  a  successive 
change  in  the  point  of  contact  of  the  cutting-block  with 
the  cutting-die.'  This  claim  is  for  a  result  or  effect,  and 


THE  SPECIFICATION.  295 

is  bad.  It  is  in  the  precise  form  condemned  in  Sickles  v. 
Falls  Company  (2  Fish.,  202)  and  Sangster  v.  Miller,  (2 
Fish.,  563.) 

"  The  whole  genus  of  claims  for  '  so  constructing/  'so 
combining,'  '  producing,'  '  determining,'  and  so  on,  ad 
infinitum,  through  the  whole  range  of  present  participles, 
are  of  the  same  character,  and  obnoxious  to  the  same 
objection.  Some  of  them  have  been  saved  in  the  courts 
as  by  fire,  by  the  construction  given  to  the  words  '  sub- 
stantially as  described,'  and  the  like,  but  not  one  of  them 
should  have  been  granted  by  the  office.  The  patent  is 
for  the  means  of  producing  a  result,  not  for  the  result  as 
produced." 

In  the  case  of  Streeter  v.  Stodart,  ( Commissioners'  Decis- 
ions, September  7,  1870,)  the  Commisioner  says:  "It  is  a 
pernicious  fallacy  to  say  that  every  change  in  the  *  ar- 
rangement '  of  the  elements  of  a  combination  may  form 
the  foundation  of  a  legitimate  claim.  This  matter  is 
fully  discussed  in  the  cases  of  Nathan  Martz  (Commis- 
sioners' Decisions,  January,  1870,  p.  18)  and  of  John  Un- 
derwood,  (Commissioners'  Decisions,  April,  1870,  p.  24.)  In 
addition  to  what  is  there  said,  it  may  be  remarked,  that 
the  word '  arrangement'  has  been  construed  by  the  courts 
to  be  synonymous  with  'combination.'  (See  Smith  v. 
Higgins,  1  Fish.,  540;  Bell  v.  Daniels,  lb.,  372;  Howe  v. 
Morton,  Ib.,  589.)  To  make  a  claim  good  for  the  ar- 
rangement of  parts,  it  is  necessary  that  all  the  elements 
should  exist  which  are  necessary  to  constitute  a  valid 
combination  of  the  same  parts,  to  wit:  A  novel  union 
of  the  parts,  a  co-operation  of  the  parts  united,  and  the 
exercise  of  the  inventive  faculty  as  distinguished  from 
the  skill  of  the  mechanic. 


296  PROCEDURE  IN  THE  PATENT  OFFICE. 

"  Thus,  A+B+C  may  constitute  a  legitimate  combi- 
nation when  used  in  a  certain  relation.  So,  A+C+D 
may  constitute  another  legitimate  combination,  provided 
D  be  not  the  mere  equivalent  of  B,  or  a  substitute,  the 
employment  of  which  involves  no  invention.  Now,  if 
one  discovers  that  by  employing  B  in  the  first  combina- 
tion in  a  new  and  modified  form,  by  the  use  of  which  a 
new  and  useful  result,  or  a  better  result,  is  obtained  than 
by  the  original  combination,  how  shall  we  state  the  form- 
ula of  his  invention  ?  Obviously,  it  is  a  combination  of 
A  with  C  and  with  B,  as  modified.  If,  therefore,  we 
designate  the  new  form  of  B  by  B',  the  formula  of  the 
combination  will  be  A+B'+C.  But  this  same  element 
may  be  further  modified,  not  by  change  of  form,  but  by 
change  of  location,  by  which  the  result  is  materially 
changed  or  a  new  result  is  attained.  If  we  designate 
the  element  with  the  additional  condition  of  the  new 
location  imposed  upon  it  as  B",  the  combination  will 
now  be  A+B"-fC. 

"  But  it  must  be  obvious  that  to  constitute  a  patent- 
able  subject-matter,  the  elements  designated  as  B'  and 
B"  must  differ  from  the  original  B  in  the  same  manner 
in  kind  as  D  differs  from  it  in  the  second  combination 
proposed;  that  is,  they  must  not  be  mechanical  equiva- 
lents for  B,  nor  obvious  substitutes  for  it,  nor  such  mod- 
ifications of  it,  either  as  to  character  or  location,  as  be- 
long to  the  skill  of  the  mechanic  rather  than  to  the 
genius  of  the  inventor. 

"  I  do  not  mean  to  assert  that  a  change  of  location  may 
not  enter  as  an  element  into  a  legitimate  combination ; 
but  it  is  subject  to  the  same  conditions  as  any  other  ele- 
ment. It  must  be  a  new  location,  considered  in  the 


THE  SPECIFICATION.  297 

light  of  the  effect  which  it  produces.  Tt  'must  require 
invention  to  adopt  it,  and  when  it  has  once  been  em- 
ployed, no  invention  is  involved  in  its  use  in  any  subse- 
quent combination,  except  in  those  cases  in  which,  to 
avail  himself  of  it,  the  inventor  is  compelled  to  exercise 
further  invention  in  the  reorganization  of  his  machine." 

104.  How  IMPROVEMENTS  SHOULD  BE  SET  FORTH. — If  a 
patent  be  for  an  improved  machine,  or  an  improvement 
on  a  machine,  (the  terms  meaning  substantially  the  same,) 
the  patent  must  state  in  what  the  improvement  specific- 
ally consists,  in  order,  first,  to  enable  the  public  to  enjoy 
the  full  benefit  of  the  discovery,  when  the  monopoly  has 
expired,  by  having  it  so  described  on  record  that  it  can 
be  constructed;  and,  second,  to  put  every  citizen  on  his 
guard,  that  he  may  not,  through  ignorance,  violate  the 
law  by  infringing  the  rights  of  the  patentee.     (Barrett  v. 
Hall,  1  Mason,  476;  Ecans  v.  Hettick,  3  Wash.,  425,  426.) 

The  object  of  the  distinction  between  what  is  new  and 
what  is  old  is  to  show  distinctly  what  the  patentee  claims 
as  his  invention.  In  order  to  make  this  distinction,  the 
patentee  is  not  confined  to  any  precise  form  of  words. 
The  more  usual  form  is  to  state  affirmatively  what  the 
patentee  claims  as  new;  and  if  he  makes  use  of  anything 
old,  to  state  negatively  that  he  does  not  claim  that  thing. 
The  former  machine  or  other  thing  should  be  set  forth 
sufficiently  to  make  known  what  it  is  that  the  patentee 
engrafts  his  improvement  upon ;  he  should  then  disclaim 
the  invention  of  the  thing  thus  referred  to  or  described, 
and  state  distinctly  his  improvement  as  the  thing  which 
he  claims  to  have  invented.  (Curtis  on  Patents,  §§  232, 
233;  Kneas  v.  The  Schuylkill  Bank,  4  Wash.,  9,  14.) 

105.  IMPLICATION  IN  REGARD  TO  PARTS  NOT  CLAIMED. 


298  PROCEDURE  IN  THE  PATENT  OFFICE. 

When  a  patentee  specifies  what  he  claims  as  new,  every 
mechanical  part,  principle,  or  combination  which  he  men- 
tions in  his  specification,  but  which  are  not  included  in 
his  invention  as  claimed  and  limited,  must,  by  necessary 
implication,  be  considered  as  admitted  to  be  old  or  in  use 
before;  and  the  patent  is  not  invalid  because  the  patentee 
has  not  in  express  words  particularly  stated  them  to  be 
old,  nor  described  the  particular  manner  of  their  con- 
struction. ( Winans  v.  New  York  and  Erie  Railroad  Com- 
pany, 1  Fish.,  213.) 

106.  THE  INVENTION   SHOULD  NOT  BE  DESCRIBED  OR 
CLAIMED  AS  A  MODE,  FUNCTION,  OR  ABSTRACT  PRINCI- 
PLE.— Although  the  invention  may  be  a  patentable  sub- 
ject, it  may  be  claimed  in  such  a  way  as  to  appear  a  mere 
function  or  abstract  principle.     In  drawing  the  specifi- 
cation, therefore,  care  should  be  taken  not  to  describe 
the  invention  as  a  mode  for  producing  an  effect  (vide  su- 
pra, p.  220)  detached  from  the  machinery  by  which  the 
effect  is  produced.     A  patent  must  be  granted  for  the 
machine,  and  not  for  a  "mode"  of  operation,  principle, 
idea,  or  other  abstraction.    (Barrett  v.  Hall,  1  Mason,  476 ; 
Burr  v.  Duryea,  1  Wallace,  531;   Curtis  on  Patents,  §  242.) 

107.  VAGUENESS  AND  AMBIGUITY  OF  DESCRIPTION. — The 
degree  of  clearness  and  freedom  from  ambiguity  required 
in  the  specification  is  necessary  to  enable  the  Commis- 
sioner of  Patents  to  judge  whether  the  matter  claimed 
is  new  or  too  broad,  and  to  enable  the  courts,  if  the  pat- 
ent should  be  afterwards  contested,  to  form  like  judg- 
ment, and  also  to  enable  the  public  to  understand  what 
the  patent  is.     (Hoggv.  Emerson,  6  How.,  484.)     If  the 
specification   is   wholly   ambiguous   and  uncertain,   so 
loosely  defined,  and  so  inaccurately  expressed,  that  the 


THE  SPECIFICATION.  299 

court  cannot,  upon  a  fair  interpretation  of  the  words  and 
without  vague  conjecture  of  intention,  gather  what  it  is, 
the  patent  is  void  for  such  defect.  (Ames  v.  Howard, 
1  Sumn.,485.)  The  inventor  should  not  be  permitted  to 
couch  his  specification  in  such  ambiguous  terms  that  its 
claims  may  be  expanded  or  contracted  to  suit  the  exi- 
gency. (Parker  v.  Sears,  1  Fish.,  93.) 

A  claim  may  be  saved  by  construction  that  ought  not 
to  have  passed  the  Patent  Office  in  such  a  form  as  to 
make  construction  necessary  to  its  salvation.  The  Com- 
missioner ought  not  to  send  doubtful  claims  to  the  courts. 
The  law  makes  him  the  judge  in  the  first  instance,  and 
he  has  no  right  to  turn  out  his  work  upon  the  country 
botched  and  blundering,  in  the  hope  that  some  court  will 
patch  it  up.  Many  patents  never  go  into  the  courts,  and 
all  patents  ought  to  be  so  drawn  that  honest  men  of  ordi- 
nary business  capacity  need  not  be  afraid  to  deal  with 
them.  (Joseph  Thome  ex  parte,  Commissioners'  Decisions, 
1869,  p.  76.) 

The  act  of  1836,  §  6,  provided  that  the  applicant  should 
"  deliver  a  written  description  of  his  invention  or  discov- 
erv^  *  *  *  avoiding  unnecessary  prolixity,"  &c.  The 
act  of  July  8, 1870,  §  36,  prescribed  that  the  specification 
shall  set  forth,  "in  full,  clear,  concise,  and  exact  terms," 
the  nature  of  the  invention  or  discovery.  These  provis- 
ions are  necessarily  to  be  enforced  by  the  Commissioner, 
whose  powers  are  ample,  from  the  nature  and  necessities 
of  the  case,  to  determine  what  matter  in  a  specification 
is  or  is  not  essential  to  a  "full,  clear,  concise,  and  exact" 
description  of  the  invention  claimed.  (D.  M.  Smyth  ex 
parte,  Commissioners'  Decisions,  July  23,  1870.) 

It  certainly  is  the  duty  of  the  Commissioner  of  Patents 


800  PROCEDURE  IN  THE  PATENT  OFFICE. 

to  see  to  it  that,  so  far  as  this  result  is  possible  of  achieve- 
ment, none  but  unambiguous  claims  are  sent  forth 
from  the  office.  It  is  not  sufficient  that  the  claim  be 
such  as  by  a  bare  possibility  may  be  saved  through  a  lib- 
eral construction  by  the  courts.  (N.  J.  Simonds,  Commis- 
sioners' Decisions,  1870,  p.  25.)  The  ideal  claim  is  one 
which  admits  of  but  a  single  interpretation,  and  that  of 
the  most  literal  character.  The  closer  the  Commissioner 
approximates  to  this  standard  in  the  exercise  of  his  dis- 
cretionary power  in  the  revision  of  claims,  the  more 
nearly  will  one  prolific  source  of  misunderstanding  and 
controversy  be  entirely  avoided.  (Continental  Wind 
Mill  Company  ex  parte,  Commissioners'  Decisions,  July  27, 
1870.) 

108.  FRAUDULENT  CONCEALMENT,  FALSE  SUGGESTION. — 
The  statute  enacts  it  as  one  of  the  defenses  to  an  action 
on  a  patent,  "that,  for  the  purpose  of  deceiving  the  pub- 
lic, the  description  and  specification  filed  by  the  patentee 
in  the  Patent  Office  was  made  to  contain  less  than  the 
whole  truth  relative  to  his  invention  or  discovery,  or 
more  than  is  necessary  to  produce  the  desired  effect." 
This  defense  will  be  made  good  where  it  appears  that  the 
patentee  fraudulently  concealed  something  that  he  knew 
to  be  material,  or  added  something  which  he  knew  was 
not  useful,  material,  or  necessary  at  the  time  when  he 
prepared  his  specification.     If  it  was  subsequently  dis- 
covered not  to  be  necessary,  his  patent  will  not  be  affected 
by  it.     (Curtis  on  Patents,  §  250.) 

109.  DESCRIPTIVE  TITLE. — While  the  specification  is 
usually,  and  always  ought  to  be,  drawn  with  the  assistance 
of  learned  and  able  counsel,  the  short  descriptive  title 
in  the  patent  is  usually  suggested  by  the  Commissioner 


THE  SPECIFICATION.  301 

of  Patents.     (Goodyear  v.  New  Jersey  Central  Railroad,  1 
Fish.,  626.) 

The  title  or  description  given  to  the  invention  in  the 
grant  is  never  expected  to  be  specific,  but  only  to  indi- 
cate the  nature  and  design  of  the'  invention.  The  spec- 
ification, as  its  name  indicates,  must  be  searched  for  the 
exact  description  of  what  the  patentee  claims.  (Sickles  v. 
Gloucester  Manufacturing  Company,  1  Fish.,  222.) 

110.  ORDER  OF  SPECIFICATION. — The  following  order 
of  the  different  portions  of  the  specification  should  be 
observed:  First,  the  statement  of  the  object  or  purpose 
of  the  invention;  secondly,  the  essence  of  the  same; 
thirdly,  the  description  of  the  detail;  and,  lastly,  the 
claim.     It  is  not  absolutely  indispensable  to  the  order  of 
the  specification  for  the  object  and  essence  of  the  inven- 
tion to  form  distinct  sections  therein,  since  they  are  both 
comprehended  in  the  "  nature  "  of  the  invention.    (Spence 
on  the  Specification,  60.) 

111.  STATEMENT  OF  THE  OBJECTS  OF  THE  INVENTION. — 
It  is  usual  in  the  specification,  after  reciting  the  title  of 
the  invention  in  the  letters  patent,  to  set  out  by  stating 
its  object  or  purpose.     This  is  intended  to  show  what 
desideratum  the  invention  is  designed  to  supply  in  the 
manufacture  to  which  it  refers.     (Ib.,  61.) 

The  object  or  purpose  of  the  invention  being  in  this 
manner  opened  up,  the  natural  course  seems  that  it 
should  be  followed  by  a  statement  of  the  means  which 
the  invention  supplies  lor  carrying  such  object  into  ef- 
fect; not  a  detailed  description  of  such  means,  but  the 
broad  feature  or  principle  involved  therein.  (Ib.,  64.) 

This  part  of  the  specification  forms  a  kind  of  epitome 

of  the  matter,  which  is  afterwards  treated  more  at  length. 
26 


302  PROCEDURE  IN  THE  PATENT  OFFICE. 

It  states  broadly  in  what  the  invention  consists  as  to  its 
practical  character.  It  is  here  stated  what  particular  con- 
struction and  arrangement  of  machinery,  or  what  com- 
binations of  materials  or  processes,  are  now  organized  and 
brought  together  for  ftie  first  time  in  a  useful  manner. 
This,  indeed,  sets  forth  the  essence  of  the  invention,  for 
the  idea  of  a"patented  invention  immediately  suggests  to 
the  mind  some  mode  of  changing  the  existing  machinery, 
or  known  materials,  or  processes  by  which  a  beneficial 
result  is  produced.  (/&.,  65.) 

It  is  evident  that  great  accuracy  is  here  required,  since 
the  question,  What  is  the  invention  ?  is  answered  by  this 
part  of  the  specification,  taken  in  conjunction  with  the 
claim.  While  it  is  eminently  desirable  that  the  points 
here  advanced  should  be  strictly  practical,  it  is  at  the 
same  time  highly  important  to  guard  against  any  undue 
narrowing  of  the  object  or  purpose  of  the  invention;  but 
in  endeavoring  to  guard  against  the  evil  of  cramping  the 
essence  of  the  invention,  care  should  be  taken  not  to 
overstate  its  limits,  which  is  an  equally  dangerous  error. 
The  right  course  lies  between  the  two,  and  consists  in  a 
truthful  disclosure  of  the  exact  nature,  essence,  or  qual- 
ity of  the  invention  in  its  application  to  the  object  and 
purposes  thereof.  (Ib.} 

112.  DESCRIPTION  OF  DETAIL. — Next  to  a  clear,  broad 
statement  of  the  invention  comes  a  description  of  the 
detail,  which  exhibits  the  instrumental  means  of  accom- 
plishing the  object  or  purpose  of  the  invention.  This 
description  of  detail  should  be  adequate  to  meet  the  full- 
ness of  the  expressions  employed  to  characterize  the 
essence  of  the  invention,  so  that  the  latter  may  be  clearly 
seen  to  have  a  real  existence  when  carried  into  practice. 


THE  SPECIFICATION.  303 

At  the  same  time  care  should  be  taken  not  to  cramp  its 
extent  as  a  principle,  the  object  of  the  description  of  the 
detail  being  to  show  that  the  invention  really  contains 
an  embodied,  as  distinguished  from  an  abstract,  princi- 
ple. In  this  view,  the  machinery  or  apparatus  described, 
as  the  instrumental  means  of  carrying  the  invention  into 
effect,  ought  to  elucidate  the  structure  of  a  body  duly 
proportioned  and  adapted  to  perform  its  several  func- 
tions in  such  a  manner  as  to  evince  the  vitality  of  the 
principle  to  which  its  action  is  (in  the  enunciation  of  the 
essence  of  the  invention)  alleged  to  be  subservient:  the 
main  idea  being  that  such  detail  presents  to  our  view  the 
organization  of  matter  through  which  the  principle  or 
essence  of  the  invention  is  realized  or  seen  to  act.  All 
undue  complexity  of  description  should  be  avoided,  since 
it  may  turn  out  to  be  more  detrimental  than  mere  sur- 
plusage, by  its  suggesting  an  interpretation,  in  reference 
to  the  subject-matter,  foreign  to  or  subversive  of  the  real 
nature  of  the  same.  (J6.,  72.) 

113.  THE  CLAIM. — The  claim  may  be  said  to  be  the 
most  important  part  of  the  specification.  It  is  here  that 
the  essence,  principle,  or  spirit  of  the  invention  is  stated 
in  the  most  distinct  terms.  The  whole  of  the  foregoing 
matter  is  here  summed  up  and  resolved  into  its  one  idea. 
All  the  previous  description  of  circumstances  comes  now 
to  be  seen  only  as  affording  a  clue  to  the  right  interpre- 
tation of  this  final  definition  of  the  essential  character 
of  the  invention.  The  claim,  rightly  understood,  is  in 
fact  the  specification;  but,  then,  in  order  that  it  may  be 
rightly  understood,  reference  must  be  had  to  the  ante- 
cedent matter,  and  it  may  indeed  be  said  that  the  intel- 
ligibility of  the  whole  specification  greatly  depends  upon 


304  PROCEDURE  IN  THE  PATENT  OFFICE. 

the  particular  interpretation  of  the  claim  which  is  sug- 
gested by  such  reference.  (J6.,  91.) 

It  is  well  to  calculate  upon  every  objection  being  raised 
to  the  specification  that  human  ingenuity  can  devise; 
and  accordingly  it  may  be  foreseen  that  the  true,  distinct 
nature  of  the  invention  is  left  open  to  misconstruction 
by  a  mere  statement  of  what  it  is,  since  it  may  appear  to 
be  not  only  that,  but  something  more  also,  (probably  of 
a  prejudicial  character,)  unless  guarded  from  such  con- 
struction by  a  suitable  negation.  This  course  is  particu- 
larly advisable  when  the  patent  is  for  a  new  combination 
of  materials  or  processes  which  in  their  separate  form 
are  old  or  not  open  to  be  claimed.  (Ib.) 

114.  FORM  OF  SPECIFICATION  FOR  A  MACHINE  BY  A  SOLE 
INVENTOR. — 

I,  William  Wood-worth,  of  Poughkeepsie,  in  the  county  of  Duchess,  and 
State  of  New  York,  have  invented  certain  improvements  in  planing  ma- 
chines, of  which  the  following  is  a  specification : 

Nature  and  objects  of  the  invention. 

The  first  part  of  my  invention  relates  to  the  combination  of  rotary  cut- 
ters and  feeding-rollers,  in  such  a  mauner  that  the  said  feeding-rollers  shall 
be  capable  of  feeding  the  lumber  to  the  cutters,  and  also  of  effectually 
resisting  the  tendency  of  the  cutters  to  draw  the  lumber  upward  towards 
them;  the  object  of  this  part  of  my  invention  being  to  reduce  the  lumber 
operated  upon  to  a  uniformity  of  thickness,  and  to  give  it  a  planed  and 
even  surface  upon  one  side  thereof. 

The  second  part  of  my  invention  relates  to  the  combination,  with  feed- 
ing-rollers and  rotary  cutters  for  planing  one  of  the  principal  surfaces  of 
the  lumber,  of  rotary  matching  cutters,  so  as  to  form  a  tongue  or  groove, 
or  both,  upon  the  edge  or  edges  of  the  lumber,  at  the  same  time  that  one 
of  its  principal  surfaces  is  planed. 

Description  of  the  accompanying  drawings. 

Figure  1  is  a  side  elevation  of  a  machine  embodying  my  invention. 
Figure  2  is  a  plan  of  the  same. 


THE  SPECIFICATION.  305 

Figure  3  is  an  elevation,  showing  that  end  of  the  machine  which  is  at  the 
right  hand  in  figure  1. 

Figure  4  is  a  vertical  transverse  section,  showing  those  parts  of  the  ma- 
chine which  are  at  the  right  hand  of  the  line  x  x  drawn  across  figures  1 
and  2. 

General  description. 

A  is  the  frame  of  the  machine,  which  frame  should  be  substantially  con- 
structed to  resist  the  vibrations  of  the  operating  parts.  B  is  the  driving- 
pulley,  which  is  hung  on  the  main  shaft  C  of  the  machine,  from  which  latter 
motion  is  communicated  to  the  operating  parts.  D  is  the  shaft  of  the  rotary 
cutters,  by  which  the  lumber  is  planed.  This  shaft  is  made  flat  upon  two 
of  its  sides,  between  its  bearings,  for  the  reception  of  the  cutters  E  E,  which 
are  firmly  secured  to  it  by  bolts  a  a,  the  holes  through  these  cutters  for  the 
reception  of  these  bolts  being  elongated  in  the  direction  of  the  width  of  the 
cutters  to  allow  the  necessary  adjustment  of  the  cutters.  The  shaft  D  is 
hung  in  adjustable  bearings,  by  which  it  may  be  elevated  and  depressed  to 
regulate  the  thickness  of  the  planed  lumber.  F  is  a  pulley  on  the  shaft 
D,  which  receives  motion  by  a  belt,  G,  from  the  band-wheel  H,  on  the  driv- 
ing-shaft. I  I  and  J  J  are  the  feeding-rollers,  each  pair  of  which  is  con- 
nected by  finger-pinions  b  b,  and  the  upper  roller  of  each  pair  is  hung  in 
spring  bearings,  which  allow  it  to  yield  slightly  upward  to  pressure,  to 
adapt  it  to  any  differences  or  inequalities  in  the  thickness  of  the  lumber. 
The  lower  roller  of  each  pair  is  provided  with  a  worm-wheel,  c,  which 
meshes  into  a  worm  or  endless  screw,  d,  on  the  shaft  k,  which  is  propelled 
by  a  bevel-wheel,  I,  on  the  main  shaft,  working  into  the  bevel-wheel  /  on 
the  shaft  k. 

L  and  M  are  cutters  hung  upon  vertical  shafts,  N  and  0,  one  set  of  these 
cutters  being  adapted  to  form  a  groove,  and  the  other  to  form  a  tongue, 
upon  the  edge  of  the  board  to  be  operated  upon.  These  cutters  are  attached 
to  the  shafts  in  the  manner  already  described  with  relation  to  the  cut- 
ters E  E. 

The  shafts  N  and  O  are  provided  with  pulleys,  g  g,  and  rotation  is  com- 
municated to  them  by  belts,  h  A,  from  pulleys,  i  i,  on  the  main  shaft ;  rota- 
tion being  given  in  the  direction  of  the  arrow  to  the  driving-pulley. 

The  lumber  to  be  planed  is  introduced  from  the  end  of  the  machine, 
which  is  shown  at  the  right  hand  in  figures  1  and  2,  and  being  grasped  l»y 
the  rollers  I  I,  is  by  them  drawn  forward  to  the  cutters  E  E,  which,  being 
rapidly  revolved  towards  the  advancing  lumber,  plane  it  to  the  proper 
thickness;  and  as  the  lumber  continues  to  advance,  it  is  grasp«d  by  the 
rollers  J  J,  which  aid  in  the  feeding  motion  and  discharge  the  board  after 
26* 


306  PROCEDURE  IN  THE  PATENT  OFFICE. 

it  has  passed  the  cutters.  The  upper  rollers  I  and  J,  being  hung  in  spring 
bearings,  always  exert  a  pressure  on  the  top  of  the  board,  and  thus  prevent 
its  being  raised  up  by  the  action  of  the  cutters  E  E. 

When  the  lumber  is  designed  for  floors  or  ceilings,  or  other  purpose  for 
which  it  is  required  to  be  matched,  a  tongue  is  formed  upon  one  edge  of  it 
and  a  groove  in  the  other  by  the  cutters  L  and  M,  which  both  revolve  to- 
wards the  advancing  board  ;  and  these  operations  are  performed  at  the  same 
time  that  the  upper  surface  of  the  board  is  planed,  the  whole  being  done 
at  a  single  operation. 

When  the  lumber  is  required  to  be  matched,  it  should  be  first  reduced  to 
a  uniform  width,  and  guided  in  its  introduction  into  the  machine  by  a  gauge, 
P,  attached  to  the  bed  Q  of  the  machine. 

When  the  lumber  is  not  to  be  matched,  this  gauge  and  the  cutters  L  and 
M  should  be  taken  off  and  dispensed  with. 

Claims. 

I  claim  as  my  invention : 

First — The  combination  of  the  cutters  E  E  and  the  feeding-rollers  I  I 
and  J  J,  substantially  as  and  for  the  purpose  hereinbefore  set  forth. 

Second — The  combination  with  the  cutters  E  E  and  feeding-rollers  I  I 
and  J  J  of  the  cutters  L  and  M,  substantially  as  and  for  the  purpose  here- 
inbefore set  forth.  WILLIAM  WOODWOETH. 

Witnesses:  JETHRO  WOOD. 
OLIVER  EVANS. 

115.  FORM  OF  SPECIFICATION  FOR  A  PROCESS  BY  JOINT 
INVENTORS. — 

We,  Marion  Ellsworth,  of  Chicago,  county  of  Cook,  and  State  of  Illi- 
nois, and  Joseph  E.  Shaw,  of  Indianapolis,  county  of  Marion,  and  State 
of  Indiana,  have  invented  a  certain  process  for  separating  smut  and  all 
impurities  from  wheat,  of  which  the  following  is  a  specification : 

Take  of  lime,  newly  slaked  and  while  yet  warm,  one  and  a  half  pounds 
to  each  one  hundred  pounds  of  wheat.  Mix  the  lime  well  with  the  wheat, 
let  it  stand  one  hour,  then  pass  it  through  a  smut-mill  in  the  usual  way, 
and  it  will  be  found  that  all  the  lime,  smut,  dirt,  and  other  impurities  at- 
tached to  the  wheat,  of  every  kind,  and  which  no  smut-mill,  without  my 
liming  process,  will  fully  separate,  will  be  entirely  removed,  and  the  flour 
will  be  as  white  and  as  sweet  as  though  made  from  the  best  of  wheat. 

We  do  not  claim  the  smut-mill,  or  any  improvement  thereon,  or  any  new 
chemical  quality  of  lime. 


THE  SPECIFICATION.  307 

Claim. 

We  claim  as  our  invention  the  process  of  applying  lime,  when  newly 
slaked  and  warm,  to  wheat,  before  passing  the  latter  through  a  smut-mill, 
so  as  to  cleanse  the  wheat  from  all  impurities,  substantially  as  described. 

MARION  ELLSWORTH. 
JOSEPH  B.  SHAW. 
Witnesses :  MAURICE  JONES. 
HENRY  ELIAS. 

116.  FORM  OF  SPECIFICATION  FOR  A  COMPOSITION  OF  MAT- 
TER BY  AN  ADMINISTRATOR. — 

Benjamin  Browning,  deceased,  late  of  Charleston,  in  the  district  of 
Charleston,  and  State  of  South  Carolina,  during  his  lifetime  invented  a 
certain  compound  called  "wool  oil,"  to  be  used  instead  of  lard,  rape-seed, 
or  other  oils,  in  the  manufacture  of  wool. 

The  nature  of  the  invention  of  the  said  Browning  consists  in  mixing 
olive,  lard,  or  rape-seed  oil  with  a  solution  of  oil  of  soap  dissolved  in  hot 
water. 

To  prepare  the  wool  oil,  take  a  quantity  of  oil  soap  of  any  kind,  pro- 
vided the  quality  be  good,  and  dissolve  the  same  in  hot  water,  say  about 
thirty  pounds  of  oil  soap  to  thirty  gallons  of  water,  or  a  sufficient  quantity 
of  soap  to  saturate  the  water.  Then  take  equal  parts,  by  measure,  of  olive, 
lard,  rape-seed,  or  any  other  kind  of  oil  which  can  be  used  on  wool  in  the 
process  of  its  manufacture,  and  mix  it  with  the  preparation  aforesaid,  to 
wit,  the  soap  solution,  which,  after  such  mixture,  is  ready  to  be  used  on 
the  wool  with  as  beneficial  an  effect  as  if  pure  oil  only  had  been  used. 
This  wool  oil  will  not  decompose  by  age,  because  the  oil  of  soap  neutral- 
izes the  stearine  in  the  oil ;  hence  there  is  nothing  to  decompose.  And  for 
the  same  reason  spontaneous  combustion  cannot  be  produced. 

Claim. 

I  claim  as  the  invention  of  the  said  Benjamin  Browning  the  manufac- 
ture or  preparation  of  a  compound,  which  is  denominated  wool  oil,  of  the 
ingredients,  in  the  proportions,  and  for  the  purposes  set  forth. 

EBENEZER  WHITNEY, 

Administrator. 

Witnesses:  JOHN  M.  THOMPSON. 
ARTHUR  BARTON. 


308 


PROCEDURE  IN  THE  PATENT  OFFICE. 


VI.  Drawings  and  Model. 


117.  Drawings  attached  to  the  pat- 

ent as  part  of  specification. 

118.  Rules  concerning  drawings. 

119.  Copies  furnished  by  the  office. 

120.  Eelation  of  drawings  to  the 

specification. 

121.  Description  of  drawings. 

122.  Letters. 

123.  Order  of  letters. 


SEC. 

124.  Dotted  linos. 

125.  Model. 

126.  Specimen  of  ingredients. 

127.  Commissioner    may    dispense 

with  model. 

128.  Requisites  of  the  model. 

129.  Model  returned  in  rejected  and 

abandoned  cases. 

130.  Model  as  evidence. 


117.  DRAWINGS  ATTACHED  TO  THE  PATENT  AS  PART  OF 
THE  SPECIFICATION. — When  the  nature  of  the  case  admits 
of  drawings,  the  applicant  shall  furnish  one  copy,  signed 
by  the  inventor  or  his  attorney  in  fact,  and  attested  by 
two  witnesses,  which  shall  be  filed  in  the  Patent  Office; 
and  a  copy  of  said  drawings,  to  be  furnished  by  the  Pat- 
ent Office,  shall  be  attached  to  the  patent  as  part  of  the 
specification.     (Act  of  July  8, 1870,  §  27.) 

118.  EULES    OF   THE   PATENT    OFFICE    CONCERNING    THE 

PREPARATION  OF  DRAWINGS. — Drawing  must  be  on  thick, 
smooth  drawing  paper,  sufficiently  stiff  to  support  itself 
in  the  portfolios  of  the  office.  It  must  be  neatly  and 
artistically  executed,  with  such  detached  sectional  views 
as  .to  clearly  show  what  the  invention  is  in  construction 
and  operation.  Each  part  must  be  distinguished  by  the 
same  number  or  letter  whenever  it  appears  in  the  several 
drawings.  The  name  of  the  invention  should  be  written 
at  the  top,  the  shortest  side  being  considered  as  such. 
This  drawing  must  be  signed  by  the  applicant  or  his  at- 
torney, and  attested  by  two  witnesses,  and  must  be  sent 
with  the  specification.  Tracings  upon  cloth  pasted  on 


DRAWINGS  AND  MODEL.  309 

thick  paper  will  not  be  admitted.  Thick  drawings 
should  never  be  folded  for  transmission,  but  should  be 
rolled.  (Patent  Office  Rules,  July,  1870.) 

The  following  rules  must  be  observed  in  the  prepara- 
tion of  the  drawings,  in  order  that  they  may-  be  photo- 
lithographed: 

The  paper  must  be  thin  Bristol  board  or  thick  drawing 
paper,  with  a  smooth  or  calendered  surface.  The  outlines 
must  be  executed  in  deep  black  lines,  to  give  distinctness 
to  the  print.  Pale  ashy  tints  must  be  dispensed  with. 

In  shading,  lines  of  black  ink  should  be  used,  and  such 
lines  should  be  distinct  and  sharp  and  not  crowded.  Brush 
shadings  or  shadows  will  not  be  permitted. 

All  colors  except  black  must  be  avoided  in  the  draw- 
ings, lettering,  and  signatures;  violet  and  purple  inks 
must  not  be  used. 

No  agent's,  attorney's,  or  other  stamp  must  be  placed, 
in  whole  or  in  part,  within  the  margin. 

The  sheet  must  not  be  larger  than  ten  inches  by  fif- 
teen, that  being  the  size  of  the  patent.  If  more  illustra- 
tions are  needed,  several  sheets  must  be  used.  (Ib.} 

119.  COPIES  FURNISHED  BY  THE  OFFICE. — Copies  of 
drawings  of  patents  issued  after  January  1, 1869,  will  be 
furnished  to  any  one  at  the  uniform  rate  of  twenty-five 
cents  per  sheet  of  standard  size.  (/&.) 

Copies  of  drawings  of  patents  issued  prior  to  January 
1,  1869,  which  can  be  photo-lithographed,  will  be  fur- 
nished at  twenty-five  cents  per  sheet,  when  ten  or  more 
copies  are  ordered.  Single  tracings  of  such  drawings, 
or  less  than  ten,  will  be  furnished  at  the  cost  of  making 
them.  One  hundred  copies  or  more  will  be  furnished  at 
per  hundred. 


310  PROCEDURE  IN  THE  PATENT  OFFICE. 

The  duplicate  drawing  to  be  attached  to  the  patent  will 
be  furnished  by  the  office  without  charge,  and  will  be  a 
photo-lithographic  copy  of  the  thick  drawing.  (Ib.) 

Written  or  printed  copies  of  any  records,  books,  pa- 
pers, or  drawings  belonging  to  the  Patent  Office,  and  of 
letters  patent  under  the  signature  of  the  Commissioner 
or  Acting  Commissioner,  with  the  seal  of  office  affixed, 
shall  be  competent  evidence  in  all  cases  wherein  the  orig- 
inals could  be  evidence,  and  any  per3on  making  applica- 
tion therefor,  arid  paying  the  fee  required  by  law,  shall 
have  certified  copies  thereof.  And  copies  of  the  specifi- 
cations and  drawings  of  foreign  letters  patent,  certified 
in  like  manner,  shall  be  prima  facie  evidence  of  the  fact 
of  the  granting  of  such  foreign  letters  patent,  and  of  the 
date  and  contents  thereof.  (Act  of  July  8,. 1870,  §  57.) 

The  officer  intrusted  to  give  copies  of  papers  or  draw- 
ings in  patent  cases  has  no  concern  with  the  purpose  for 
which  asked.  The  policy  of  the  law  rather  requires 
than  forbids  that  copies  should  be  given  when  applied 
for.  (1  Opinions  Attorneys  General,  171.)  And  it  is  Jhe 
duty  of  the  Commissioner  of  Patents  to  give  authentic- 
ated copies  to  any  person  demanding  the  same,  on  the 
payment  of  the  legal  fees;  and  for  his  refusal  an  action 
will  lie  against  him.  (Boy den  v.  Burke,  14  How.,  583.) 
But  a  demand  accompanied  by  rudeness  and  insult  is 
not  a  legal  demand.  (76.)  A  subsequent  and  proper 
demand  cannot,  however,  be  refused  on  account  of  prior 
misconduct  or  to  enforce  an  apology.  (Ib.)  Copies  can- 
not be  taken  by  third  parties;  they  must  be  taken  by  the 
proper  officer  and  the  fees  paid  therefor.  (2  Opinions  of 
Attorneys  General,  456.) 

120.  OFFICE  OF  THE  DRAWING  AND  ITS  RELATION  TO  THE 


DRAWINGS  AND  MODEL.  311 

«k 

SPECIFICATION. — The  object  of  annexing  drawings  is  to 
explain  the  mode  of  constructing  the  subject  of  the  pat- 
ent. It  has  been  settled  that  the  drawings  constitute  a 
part  of  the  specification,  when  annexed  thereto,  and  may 
be  used  to  explain  the  otherwise  imperfect  description  in 
the  specification;  so  that  the  description  may  be  partly 
in  writing  and  partly  in  drawing;  and  if,  by  a  compari- 
son of  words  and  drawings,  the  one  will  explain  the  other 
sufficiently  to  enable  a  skillful  mechanic  to  perform  the 
work,  and  to  show  that  it  is  the  invention  claimed,  the 
specification  will  be  sufficient.  (Wilder  v.  Beecher,  2 
Blatchf.,  132.)  The  drawings  need  not  be  mentioned  in 
the  specification,  but  it  is  sufficient  if  the  patentee  puts 
them  and  written  references  on  file  with  the  specification. 
(Emerson  v.  Hogg,  2  Blatchf.,  1.)  And  a  drawing,  filed 
sometime  after  the  recording  anew  of  a  patent,  under  § 
1,  act  of  March,  1837,  is  admissible  in  evidence,  but  is 
not  to  be  deemed  or  taken  as  part  of  the  specification, 
nor  to  be  used  for  correcting  any  material  defect  therein. 
( Winans  v.  Schenectady  and  Troy  Railroad,  2  Blatchf.,  299; 
Curtis  on  Patents,  262.) 

If  the  drawings  show  an  element  of  the  invention 
which  the  patentee  has  not  included  specially  in  his 
claim,  it  is  evidence,  nevertheless,  that  it  was  a  part  of 
his  invention,  and  he  or  his  assignee  has  a  right  to  incor- 
porate that  element  in  a  reissued  patent ;  and  an  ambi- 
guity in  the  description  may  be  removed  by  reference  to 
the  drawings,  which  may  be  examined  to  determine  the 
dimensions  of  the  parts,  when  dimensions  become  mate- 
rial. (Swift  v.  Whissen.} 

The  drawing  may  also  be  referred  to  for  the  purpose 
of  adding  something  to  the  specification  or  claim  not  spe- 


312  PROCEDURE  IN  THE  PATENT  OFFICE. 

«« 

1  cifically  contained  or  mentioned  therein,  e.  g.,  to  describe 
or  show  the  existence  of  rollers  in  a  machine  when  they 
are  not  described  in  the  specification.  (  Wasliburn  v.  Gould, 
3  Story,  133.)  But  it  need  not  delineate  old  machinery 
connected  with  the  new  invention  when  no  change  in 
such  old  machinery  enters  into  the  new  invention.  (Em- 
erson v.  Hogg,  2  Blatchf.,  9.) 

121.  DESCRIPTION  OF  DRAWINGS. — If  drawings  are  used, 
they  should  be  referred  to  in  the  commencement  of  the 
specification.     "When  they  are  disposed  in  several  sheets, 
it  is  often  advisable  to  number  the  "figures"  consecu- 
tively throughout,  and  thus  to  avoid,  in  references,  the 
use  of  double  numbers,  such  as  "fig.  2,  sheet  1,"  by  en- 
abling the  reader  to  find  the  drawings  from  one  refer- 
ence.    (Macgregor,  Language  of  Specifications,  64.) 

122.  LETTERS. — The  capitals,  A,  B,  C,  &c.,  are  usually 
employed  to  mark  the  larger  parts  of  the  drawings,  and 
the  small  letters,  a,  b,  c,  &c.,  are  applied  to  more  minute 
parts.     (lb.,  65.) 

Parts  which  are  similar  in  construction,  and  differ 
only  in  position,  are  frequently  denoted  by  the  same 
letter  with  an  affix,  as  A1,  A2,  A3,  representing,  for 
example,  the  spokes  of  a  wheel  or  pillars  of  a  frame. 
(Ib.,  65.) 

123.  ORDER  OF  LETTERS. — With  regard  to  the  order  of 
letters,  it  is  not  easy  to  lay  down  comprehensive  rules, 
without  incumbering  those  who  would  observe  them  by 
confusing  restrictions.     In  some  cases,  where  the  actions 
of  each  part  of  the  portion  of  the  machine  or  process 
under  description  result  immediately  from  another,  and 
where  no  particular  or  lengthy  description  is  required  of 
one  or  other  part  in  the  nature  of  a  digression,  the  nature 


DRAWINGS  AND  MODEL.  313 

and  working  of  the  invention  may  be  described  simul- 
taneously. (Ib.) 

Thus  we  may  describe  a  portion  of  a  steam  engine  and 
the  action  of  its  parts  as  follows:  "  In  fig.  4,  A1,  A2,  A3, 
A4,  are  the  pillars  supporting  B,  the  frame.  On  B  are 
fixed  C1  C2,  the  bed-plates,  carrying  D1  D2,the  bearings  on 
which  E,  the  cylinder,  oscillates.  F  is  the  piston-rod, 
connected  with  G,  the  crank,  which  has  a  projection,  g, 
that  unlocks  at  each  revolution  of  the  catch  A,  and  thus 
sets  free  the  rod  i  and  lever  k,  at  the  same  time  moving 
the  eccentric  H,  so  as  to  work  the  valve  motion  I."  (J6., 
66.) 

In  other  cases  it  is  more  conducive  to  a  clear  under- 
standing of  the  invention  to  describe  the  parts  separately 
first,  and  to  begin  another  description  afterwards,  in 
which  their  mutual  relation  is  set  forth.  Thus  a  brew- 
ing apparatus  may  be  described:  "  In  fig.  5,  B1  is  one  of 
the  two  vats  and  its  accompanying  parts.  The  other  is 
similar.  The  vat  holds  from  one  hundred  to  one  hun- 
dred and  fifty  gallons,  and  the  height  and  diameter  are 
nearly  equal.  The  upper  part  is  hooped  by  rings  kl  k2 
A-3,  made  of  fine-tempered  iron,  about  four  inches  dis- 
tant from  each  other.  I  is  a  ball-cock,  regulating  the 
supply  of  liquor  from  the  pipe  ?w,  which  is  turned  in  a 
siphon  form,  and  dips  into  the  heating  trough  n,  so  as  to 
be  covered  with  four  or  five  inches  of  water,"  &c.  And 
after  thus  describing  all  the  parts  we  may  begin  again, 
thus:  "The  operation  of  the  machine  was  as  follows: 
The  liquor  flows  from  the  pipe  in  through  the  trough  ?i, 
by  the  ball-cock  I,  into  the  vat  B1,"  &c. 

The  first  portion  of  such  an  explanation  of  the  draw- 
ings is  something  like  a  descriptive  catalogue  of  the 
27 


314  PROCEDURE  IN  THE  PATENT  OFFICE. 

parts  represented  and  of  the  use  of  such  in  relation  to 
those  immediately  adjoining  it,  while  the  second  por- 
tion omits  such  minute  description,  on  the  supposition 
that  it  is  understood,  arid  proceeds  to  show  the  relation 
of  all  the  parts  in  the  operation  of  the  machine. 

When  there  are  many  figures,  it  affords  relief  to  the 
mind  to  state  at  once,  in  the  commencement,  what  each 
figure  represents,  thus :  "  Figure  1  represents  an  elevation 
of  my  improved  loom ;  fig.  2  is  a  vertical  section  of  the 
same,  by  a  plane  perpendicular  to  the  axis  of  the  breast- 
beam;  fig.  3  represents  the  shed  when  open;  and  fig.  4 
the  same  when  closed;  figs.  5,  6,  7,  and  8  represent  the 
machinery  at  each  corner  of  the  woof;  and  fig.  9  the 
apparatus  for  inserting  the  wire,  (on  a  larger  scale.") 
(2b.,  67.) 

124.  DOTTED  LINES. — Dotted  lines  are  usually  referred 
to  when  indicating  parts  represented  as  behind  or  cov- 
er^ed  by  those  nearer,  as  well  as  the  paths  of  points  when 
in  motion.     Great  caution  is  required  when  it  is  endeav- 
ored to  set  forth  particular  parts  of  the  machine  as  new 
parts,  by  distinguishing  them  in  drawings.     (J6.,  68.) 

It  is  to  be  recollected  that  the  object  of  the  specifica- 
tion is  not  to  describe  4he  drawings,  but  with  the  drawings 
to  describe  the  invention.  (lb.,  68.) 

125.  MODEL. — In  all  cases  which  admit  of  representa- 
tion by  model,  the  applicant,  if  required  by  the  Commis- 
sioner, shall  furnish  one  of  convenient  size  to  exhibit 
advantageously  the  several  parts  of  his  invention  or  dis- 
covery.    (Act  of  July  8, 1870,  §  29.) 

126.  SPECIMENS  OF  INGREDIENTS. — When  the  invention 
or  discovery  is  of  a  composition  of  matter,  the  appli- 
cant, if  required  by  the  Commissioner,  shall  furnish  spec- 


DRAWINGS  AND  MODEL.  315 

imens  of  ingredients  and  of  the  composition  sufficient 
in  quantity  for  the  purpose  of  experiment.     (Ib.,  §  28.) 

The  Commissioner  shall  cause  to  be  classified  and  ar- 
ranged in  suitable  cases,  in  the  rooms  and  galleries  pro- 
vided for  that  purpose,  the  models,  specimens  of  compo- 
sition, fabrics,  manufactures,  works  of  art,  and  designs 
which  have  been  or  shall  be  deposited  in  said  office;  and 
said  rooms  and  galleries  shall  be  kept  open  during  suit- 
able hours  for  public  inspection.  (Act  of  July  8,  1870, 
§13.) 

127.  COMMISSIONER  MAY  DISPENSE  WITH  MODEL. — An 
applicant,  upon  filing  his  specification  and  drawings,  may 
submit  to  the  Commissioner  the  question  whether  he 
shall  deposit  a  model  or  specimen  of  his  invention ;  other- 
wise a  model  will  be  required  in  every  case,  except  for 
designs,  where  the  nature  of  the  invention  admits  of 
such  illustration.     (Patent  Office  Rules,  July,  1870.) 

128.  REQUISITES  OF  MODEL. — The  model  must  clearly 
exhibit  every  feature  of  the  machine  which  forms  the 
subject  of  a  claim  of  invention.     (Ib.} 

It  must  be  neatly  and  substantially  made,  of  durable 
material.  It  should  be  made  as  small  as  possible,  but 
not  in  any  case  more  than  one  foot  in  length,  width,  or 
height.  If  made  of  pine  or  other"  soft  wood,  it  should 
be  painted,  stained,  or  varnished.  Glue  must  not  be 
used,  but  the  parts  should  be  so  connected  as  to  resist 
the  action  of  heat  or  moisture.  (Ib.} 

A  working  model  is  always  desirable,  in  order  to  ena- 
ble the  office  fully  and  readily  to  understand  the  precise 
operation  of  the  machine.  The  name  of  the  inventor, 
and  of  the  assignee,  (if  assigned,)  and  also  the  title  of 
the  invention,  must  be  affixed  upon  it  in  a  permanent 


316  PROCEDURE  IN  THE  PATENT  OFFICE. 

manner.  When  the  invention  is  a  composition  of  mat- 
ter, a  specimen  of  each  of  the  ingredients  and  of  the 
composition  must  accompany  the  application,  and  the 
name  of  the  inventor  and  of  the  assignee  (if  there  be 
one)  must  be  permanently  affixed  thereto.  (Ib.) 

129.  MODEL  WILL  BE  RETURNED  IF  THE  APPLICATION  is 
REJECTED  on  ABANDONED. — The  model,  unless  otherwise 
disposed  of,  will  be  returned  to  the  applicant  upon  de- 
mand and  at  the  expense  of  the  applicant,  in  all  cases, 
when  an  application  has  been  rejected  more  than  two 
years;  and,  in  any  pending  case  of  less  than  two  years' 
standing,  upon  the  filing  of  a  formal  abandonment  of 
the  application,  signed  by  applicant.     (J6.) 

Models  filed  as  exhibits,  in  interference  and  other 
cases,  may  be  returned  to  the  applicant,  at  the  discretion 
of  the  Commissioner.  (-Z"6.) 

The  Commissioner  may  restore  to  the  respective  ap- 
plicants such  of  the  models  belonging  to  rejected  appli- 
cations as  he  shall  not  think  necessary  to  be  preserved, 
or  he  may  sell  or  otherwise  dispose  of  them  after  the 
application  has  been  finally  rejected  for  one  year,  paying 
the  proceeds  into  the  treasury,  as  other  patent  moneys 
are  directed  to  be  paid.  (Act  of  July  8, 1870,  §  14.) 

130.  MODEL  AS  EVIDENCE. — Under  the  word  patent, 
used  in  reference  to  the  description  of  the  thing  pat- 
ented, is  included  the  patent,  the  specification  attached 
to  it,  and  the  model  and  drawing,  which  are  to  be  taken 
together,  as  making  up  the  description.    ( Whitney  v.  Em- 
metl,  Bald.,  314.) 

And  the  model  may  be  resorted  to  for  clearer  inform- 
ation respecting  the  invention  described  in  the  specifica- 
tion. (Hogg  v.  Emerson,  Q  How.,  485.) 


OATH  OF  APPLICANT. 


317' 


Models  of  machines,  about  which  there  is  a  question, 
are  a  kind  of  evidence  which  is  entitled  to  the  highest 
credibility,  and  which,  like  figures,  cannot  lie.  (Morris 
v.  Barrett,  1  Fish.,  461.) 

Evidence  superior  to  and  unaffected  by  the  interest  or 
prejudice  of  partisans,  or  by  the  opinions  (the  reveries 
they  may  often  be  called)  of  experts.  (McCormick  v.  Tal- 
cott,  20 -How.,  409.) 


VII.  Oath  of  Applicant. 


SEC. 

131.  To  what  applicant  is  to  make 

oath. 

132.  Oath  when  invention  has  been 

patented  abroad. 

.133.  Oath  by  administrator  or  exec- 
utor. 

134.  Oath  in  cases  of  assignment. 

135.  Before    whom    oath    may  be 

taken. 


SEC. 

136.  Papers  not  to  be  sworn  to  in 

blank. 

137.  Oath  not  essential  to  the  valid- 

ity of  the  patent. 

138.  Oath  extends  to  all  described 

in  the  specification. 

139.  False  suggestion. 

140.  Oath  prima  facie  evidence. 

141.  Form  of  oath  by  sole  inventor. 


131.  To  WHAT  APPLICANT  is  TO  MAKE  OATH. — The  ap- 
plicant shall  make  oath  or  affirmation  that  he  does  verily 
believe  himself  to  be  the  original  and  first  inventor  or 
discoverer  of  the  art,  machine,  manufacture,  composition, 
or  improvement  for  which  he  solicits  a  patent;  that  he 
does  not  know  and  does  not  believe  that  the  same  was 
ever  before  known  or  used;  and  shall  state  of  what  coun- 
try he  is  a  citizen.  (Act  of  July  8,  1870,  §  30.) 

The  applicant  is  not  required  to  make  oath  or  affirma- 
tion that  he  is  the  original  and  first  inventor,  but  that  he 
believes  himself  to  be  so.  He  cannot  know  absolutely 
whether  he  first  invented  or  discovered  the  thing  for 
27* 


318  PROCEDURE  IN  THE  PATENT  OFFICE. 

which  he  claims  a  patent,  but  he  may  believe  that  he  did ; 
and  it  is  only  when  he  is  willing  to  make  oath  that  he  so 
believes  that  the  law  grants  him  a  patent.  (Curtis  on 
Patents,  §  273.) 

132.  OATH  WHEN    INVENTION   HAS    BEEN    PATENTED 
ABROAD. — "When  application  is  made  for  a  patent  for  an 
invention  which  has  been  already  patented  abroad,  the 
inventor  will  be  required  to  make  oath  that,  according 
to  the  best  of  his  knowledge  and  belief,  the  same  has 
not  been  in  public  use  in  the  United  States  for  more  than 
two  years  prior  to  the  application  in  this  country.     (Pat- 
ent Office  Rales,  July,  1870.) 

133.  OATH  BY  ADMINISTRATOR  OR  EXECUTOR  APPLY- 
ING.— When  the  application  shall  be  made  by  legal  rep- 
resentatives, the  oath  or  affirmation  required  to  be  made 
shall  be  so  varied  in  form  that  it  could  be  made  by  them. 
(Act  of  July  8,  1870,  §  34.) 

134.  OATH  IN  CASES  OF  ASSIGNMENT  BEFORE  PATENT 
OR  REISSUE  OF  A  PATENT. — Patents  may  be  granted  and 
issued  or  reissued  to  the  assignee  of  the  inventor  or  dis- 
coverer, the  assignment  thereof  being  first  entered  of 
record  in  the  Patent  Office ;  but  in  such  case  the  appli- 
cation for  the  patent  shall  be  made  and  the  specification 
sworn  to  by  the  inventor  or  discoverer;  and  also,  if  he  be 
living,  in  case  of  an  application  for  reissue.     (Ib.,  §  33.) 

135.  BEFORE  WHOM  OATH  MAY  BE  TAKEN. — The  oath 
or  affirmation  may  be  made  before  any  person  within  the 
United  States  authorized  by  law  to  administer  oaths,  or, 
when  the  applicant  resides  in  a  foreign  country,  before 
any  minister,  charge  d'affaires,  consul,  or  commercial 
agent  holding  commission  under  the  Government  of  the 
United  States,  or  before  any  notary  public  of  the  foreign 


OATH  OF  APPLICANT.  319 

country  in  which  the  applicant  may  be.  (Act  of  July  8, 
1870,  §  30.)  The  oath  being  attested  in  all  cases,  in  this 
and  other  countries,  by  the  proper  official  seal  of  such 
notary.  (Patent  Office  Mules,  July,  1870.) 

Where  an  act  of  Congress  requires  an  oath  to  be  ad- 
ministered, such  oath,  under  the  usage  of  a  department, 
may  be  administered  by  a  State  officer  having  the  power 
to  administer  oaths.  (9  Pet.,  238;  United  States  v.  Win- 
chester, 2  McLean,  135.) 

In  all  cases  in  which,  under  the  laws  of  the  United 
States,  oaths  or  affirmations  may  be  made  before  a  jus- 
tice of  the  peace,'  they  may  be  made  before  any  notary 
public,  and,  when  certified  under  his  hand  and  seal,  shall 
have  the  same  effect  as  if  made  before  such  justice. 
(Act  of  September  16,  1850,  §  1 ;  9  Statutes  fit  Large,  458.) 

A  seal  of  a  notary  may  be  an  impression  made  by  the 
seal  on  paper,  without  wax  or  any  other  tenacious  sub- 
stance. (Orr  v.  Lacy,  4  McLean,  243.) 

The  seal  of  a  notary  is  recognized  in  all  countries 
where  the  law  merchant  prevails,  and  it  is  only  necessary 
that  it  should  conform  to  the  law  of  the  place  where  the 
notary  acts.  (Ib.} 

Commissioners  appointed  by  any  circuit  court  of  the 
United  States  may  administer  oaths  in  all  cases  in  which, 
under  the  laws  of  the  United  States,  oaths  may  be  made 
before  any  justice  of  the  peace  or  notary  public.  (Act 
of  September  16,  1850,  §  1 ;  9  Statutes  at  Large,  458.) 

136.  AN  APPLICATION  WILL  BE  REJECTED  IN  WHICH 
THE  SPECIFICATION  is  MADE  OUT  ON  PAPERS  WHICH  HAVE 
BEEN  SIGNED  AND  SWORN  TO  IN  BLANK. — In  the  case  of 
Reed  v.  Roberts,  the  Commissioner  says :  "  There  is  reason 
to  believe  that  the  practice  of  forwarding  to  clients,  to 


320  PROCEDURE  IN  THE  PATENT  OFFICE. 

be  signed  and  witnessed,  blank  sheets,  upon  which  spec- 
ifications are  afterwards  to  be  written  by  the  agent,  and 
to  which  the  previously  prepared  petition  and  oath  of  the 
applicant  are  to  be  attached,  is  not  yet  abandoned  by  at- 
torneys practicing  before  this  office.  It  is  scarcely  neces- 
sary to  say,  that  the  inventor  or  applicant  who  would  sign 
and  swear  to  a  piece  of  blank  paper,  upon  which  some  one 
else  is,  without  his  supervision,  to  write  a  description  of 
an  invention,  is  guilty  of  an  act  of  moral  perjury;  and 
that  the  attorney  or  agent  who  knowingly  presents  papers 
so  prepared  to  the  Patent  Office  is  guilty  of  a  fraud  on 
the  office  and  the  Government.  I  know  of  few  offenses 
that  may  more  properly  be  characterized  as '  gross  miscon- 
duct.' No  power  of  attorney  can  justify  any  man  in  pre- 
senting to  a  public  officer  a  paper  purporting  to  be  signed 
and  sworn  to  by  a  man  who  never  saw  it,  and  who,  at  the 
moment  it  is  presented  in  his  name,  is  absolutely  igno- 
rant of  its  contents."  (Commissioners'  Decisions,  1869,  p. 
88.) 

In  the  case  of  De  la  Marv.  Surens  et  al.  the  Commissioner 
says :  "It  appears  that  in  December,  1865,  they  applied  to 
solicitors  to  make  application  for  letters  patent.  Blank 
papers  were  presented,  which  they  signed  and  made  oath 
to  in  blank.  Subsequently,  in  fact  not  until  nearly  two 
years  afterwards,  these  blanks  were  filled  by  the  prepara- 
tion of  the  specification  which  forms  the  subject  of  this 
application.  I  have  already  had  occasion  to  call  attention 
to  this  practice  as  mischievous  and  immoral.  It  is  to  be 
hoped  that  honorable  men  will  frown  upon  it  and  avoid  it. 

"If  the  application  had  remained  in  this  condition  after 
the  disclosure  of  these  facts,  I  should  have  refused  a  pat- 
ent upon  it.  But  the  applicants  have  filed  a  substitute 


OATH  OF  APPLICANT.  321 

specification,  properly  signed  and  sworn  to.  The  law- 
requires  this  to  be  done  before  the  issue  of  the  patent. 
It  does  not  declare  the  application  to  be  a  nullity  until 
the  oath  is  furnished.  On  the  contrary,  it  has  been  de- 
cided that,  if  the  patent  issue  without  any  oath,  it  is  not 
void.  (Whittemore  v.  Cutter,  1  Gall.,  433;  Crompton  v. 
Belknap  Mills,  3  Fish.,  536.) 

""While  such  decisions  do  not  authorize  the  Commis- 
sioner to  dispense  with  the  proper  formalities,  they  clearly 
show  that  the  defects  may  be  cured  at  any  time,  and  that 
the  whole  subject  of  amendment  of  applications  is  within 
his  discretion."  (Commissioner's  Decisions,  1869,  p.  94.) 

137.  OATH  NOT  ESSENTIAL  TO  THE  VALIDITY  OF  THE  PAT- 
ENT.— The  taking  of  the  oath  in  due  form  in  an  appli- 
cation for  a  patent  is  not  a  condition  precedent  to  the 
validity  of  the  patent;  it  is  but  a  pre-requisite  to  the 
granting  thereof.  The  statute  is  directory  to  the  officer 
superintending  the  issue  of  letters  patent,  and  in  no 
degree  essential  to  its  validity.  (Whittemore  v.  Cutter, 
1  Gall,  433;  Dyerv.  Rich.,  1  Metcalf,  191.) 

In  the  case  of  Crompton  v.  Belknap  Mills  the  Court  say : 
"The  respondent  finds  among  the  papers  on  file  in  the 
case  at  the  Patent  Office  a  blank  form  of  oath,  with  the 
jurat  not  signed  by  any  magistrate;  and  hence  he  argues 
the  oath  was  not  taken.  But  the  oath  may  have  been 
taken  for  all  that;  and  this  negative  testimony  cannot 
overcome  the  direct  recital  of  the  letters  patent  that  the 
oath  was  taken,  or  the  presumption  that  the  requirement? 
of  the  law  were  complied  with  in  issuing  the  patent. 

"But,  suppose  it  were  so;  suppose  the  oath  was  not 
taken;  would  the  patent  be  void  on  that  account?  It 
was  held  otherwise  by  Justice  Story  in  the  case  of  Whit- 


322  PROCEDURE  IN  THE  PATENT  OFFICE. 

iemore  v.  Cutter,  (1  Gall.,  429.)  The  taking  of  the  oath, 
though  to  be  done  prior  to  the  granting  of  the  patent,  is 
not  a  condition  precedent,  failing  which,  the  patent  must 
fail.  It  is  the  evidence  required  to  be  furnished  to  the 
Patent  Office,  that  the  applicant  really  believes  he  is  the 
original  and  first  inventor  of  the  art,  &c.  If  he  take 
this  oath,  and  it  turns  out  that  he  was  not  the  first  in- 
ventor or  discoverer,  his  patent  must  fail  and  is  void. 
So,  if  he  do  not  take  it,  and  still  he  is  the  first  inventor 
or  discoverer,  the  patent  will  be  supported.  It  is  prima 
facie  evidence  of  the  novelty  and  originality  of  the  in- 
vention until  the  contrary  appear.  (Parker  v.  Stiles,  5 
McLean,  60.) 

"  So  the  act  says,  on  payment  of  the  duty,  that  is,  fees, 
the  Commissioner  shall  make  an  examination,  and,  if  the 
invention  shall  be  found  useful  and  important,  shall  issue 
a  patent.  Suppose  the  fees  should  not  be  required  or 
paid;  would  the  patent  therefore  be  void?  Yet  the  one 
requirement  appears  to  be  as  much  a  condition  precedent 
as  the  other;  both  directory,  not  to  be  dispensed  with,  but 
neither  involving  the  validity  of  the  patent  when  granted." 
(3  Fish.,  536.) 

138.  OATH  EXTENDS  TO  ALL  IN  SPECIFICATION. — The 
oath  of  inventor  accompanying  his  application  for  a  pat- 
ent is  to  be  considered  as  extending  to  all  described  in 
his  specification,  no  less  than  the  title  of  his  invention. 
(Hogg  v.  Emerson,  6  How.,  482;  King  v.  Gedney,  MS.  Ap- 
peal Cases,  D.  C.,  1856.) 

139.  FALSE  SUGGESTION. — M,  an  alien,  made  oath  that 
he  was  a  citizen  of  the  United  States,  and  obtained  a 
patent.    Eight  years  afterward  he  surrendered  his  pat- 
ent, made  oath  that  he  was  a  citizen  of  France,  paid  the 


OATH  OF  APPLICANT.  323 

balance  of  the  fee  due  the  Patent  Office,  and  obtained  a 
reissue,  which  recited  (among  other  things)  that  said 
original  letters  patent  were  "granted  to  him  upon  his 
belief  that  he  was  a  citizen  of  the  United  States,  which 
belief  arose  from  an  ignorance  of  the  laws  of  the  United 
States:"  Held,  That  the  original  and  reissued  patents 
were  both  invalid :  the  first  because  of  the  false  sugges- 
tion ;  the  second  from  want  of  power  in  the  Comtnis-* 
siouer  to  grant  it.  (Child  v.  Adams,  1  Fish.,  189.) 

140.  OATH  PRIMA  FACIE  EVIDENCE  OF  NOVELTY. — When 
the  patent  has  issued,  supported  by  the  oath  of  the  pat- 
entee, the  burden  of  proof  is  cast  upon  the  party  who 
would  object,  to  show  that  the  grant  has  been  improperly 
obtained  by  the  patentee;  because  the  law  presumes,  in 
the  first  instance,  that  the  patent  has  been  granted  upon 
the  proof  which  the  statute  requires  to  be  laid  before  the 
officers  of  the  Government,  and  that  those  proofs  were 
satisfactory.     (Curtis  on  Patents,  §  472;  Philadelphia  and 
Trenton  Railroad  Company  v.  Stimson,  14  Peters,  458.) 

.The  oath  forming  a  part  of  the  letters  patent  forms  a 
legal  ground  for  the  presumption  of  the  novelty  and 
originality  of  the  patentee's  claim  until  the  contrary  is 
proved.  (Parker  v.  Stiles,  5  McLean,  60.) 

And  a  patent  issued,  grounded  on  the  oath  of  the  pat- 
entee, is  prima  facie  evidence  in  an  action  of  infringe- 
ment. ( Fultz  ex  parte,  MS.  Appeal  Cases,  D.  C.,  1853.) 

141.  FORM  OF  OATH  BY  A  SOLE  INVENTOR. — 

STATE  OF  NEW  YORK,  1 

County  of  Albany.     ) 

Byron  Rogers,  the  above-n  dfced  petitioner,  being  duly  sworn,  (or  affirm- 
ed,) deposes  and  says,  that  he  verily  believes  himself  to  be  the  original  and 
first  inventor  of  the  improvement  in  seed  drills  described  in  the  foregoing 
specification ;  that  he  does  not  know  and  does  not  believe  that  the  same 


324 


PROCEDURE  IN  THE  PATENT  OFFICE. 


was  ever  before  known  or  used ;  and  that  he  is  a  citizen  of  the  United 
States.  BYKON  ROGERS. 

Sworn  to  and  subscribed  before  me  this  13th  day  of  March,  1869. 

SIMON  SHALLOW, 
Justice  of  the  Peace. 

If  the  applicant  be  an  alien,  the  sentence  "and  that  he 
is  a  citizen  of  the  United  States"  will  be  omitted,  and  in 
lieu  thereof  will  be  substituted  "and  that  he  is  a  citizen 
'of  the  republic  of  Mexico,"  or  "and  that  he  is  a  subject 
of  the  King  of  Italy,"  or  "  of  the  Queen  of  Great  Brit- 
ain;"  or  as  the  case  may  be. 

If  the  applicants  claim  to  be  joint  inventors,  the  oath 
will  read  "  that  they  verily  believe  themselves  to  be  the 
original,  first,  and  joint  inventors,"  &c. 


VIII.  Classification  of  Subjects  of  Invention. 


SEC. 

142.  Classification  and  distribution. 

143.  Agriculture. 

144.  Agricultural  products,  prepara- 

tion of. 

145.  Builders'  hardware. 

146.  Calorifics. 

147.  Carriages. 

148.  Chemical  processes. 

149.  Civil  engineering. 

150.  Clay  manufactures. 

151.  Compositions. 

152.  Felting  and  hat  making. 

153.  Fine  arts. 

154.  Fire-arms. 

155.  Glass  manufacture. 

156.  Grinding  mills. 

157.  Harvesters. 

158.  Household  furniture. 

159.  Hydraulics  and  Pneumatics. 


SEC. 

160.  Illumination. 

161.  Leather  manufactures. 

162.  Mechanical  engineering. 

163.  Metallurgy.  , 

164.  Metal  working. 

165.  Navigation. 

166.  Paper  making. 

167.  Philosophical  instruments. 

168.  Presses. 

169.  Printing  and  stationery. 

170.  Eailroads  and  railroad  cars. 

171.  Sewing  machines. 

172.  Sports,  games,  and  toys. 

173.  Steam  and  air  engines. 

174.  Stone  working. 
1754$urgical  apparatus. 

176.  Textile  manufactures. 

177.  Wearing  apparel. 

178.  Wood  working. 


CLASSIFICATION  OF  SUBJECTS  OF  INVENTION.  825 

142.  CLASSIFICATION  AND  DISTRIBUTION. — The  subjects 
of  invention  comprised  in  applications  filed  in  the  Patent 
Office  are  divided  into  thirty-six  classes,  some  of  which 
are  subdivided  into  sections,  and  are  distributed  for  ex- 
amination among  twenty-two  principal  examiners,  each 
of  whom  has  charge  of  a  particular  class  or  classes.     The 
classification  adopted  January  1,  1868,  is  as  follows: 

143.  CLASS  I.   AGRICULTURE. — Implements   and  ma- 
chines for  working  the  soil,  including  sowing,  planting, 
fertilizing,  digging,  and  gathering  roots,  &c.,  grafting, 
and  pruning.     (For  Harvesting,  see  Class  XV.} 

144.  CLASS  II.  AGRICULTURAL  PRODUCTS,  PREPARATION 
OF. — Implements  and  machines  for  preparing  produce  for 
market,  including  threshing,  winnowing,  protecting,  and 
preserving  crops  and  produce;  fences  and  gates,  cribs, 
granaries,  stack-covers,  and  barns;  incubation,  culture 
of  bees,  care  of  domestic  animals  and  dairy  implements. 

145.  CLASS  EH.   BUILDERS'   HARDWARE. — Door-locks 
and  fastenings,  hinges,  bell-hanging,  and  the  metallic 
trimmings  of  houses,  &c.,  including  furniture  hardware. 

146.  CLASS  IV.  CALORIFICS. — Apparatus  for  heating, 
ventilating,   and    cooking.     (For  Blast  and   Ventilating 
Fans,  Bellows,  £c.,  see  Class  XVII.} 

147.  CLASS  V.  CARRIAGES. — The  construction  of  wheel- 
ed vehicles,  including  trucks,  sleighs,  &c.     ( For  Railroad 
Cars,  see  Class  XXVIII.} 

148.  CLASS  VI.    CHEMICAL   PROCESSES.— -Instruments 
and  methods  of  evaporation,  distillation,  dyeing,  tan- 
ning, water-proofing,  vulcanizing  india  rubber,  &c.,  and 
the  manufacture  of  acids,  salts,  starch,  sugar,  alcohol, 
vinegar,  dyes,  paints,  gas,  glue,  fats  and  oils,  soaps,  ma- 
nures, &c. 

28 


326  PROCEDURE  IN  THE  PATENT  OFFICE. 

149.  CLASS  VII.  CIVIL  ENGINEERING. — The  construc- 
tion of  canals,  roads,  bridges,  wharves,  docks,  sewers, 
wiers,  dams,  &c.,  and  including  military  engineering, 
mining,  architecture,  masonry.     (For  Blasting,  gc.,  see 
Class  XII.) 

150.  CLASS  Yin.  CLAY  MANUFACTURES. — The  making 
of  bricks,  tiles,  pottery,  porcelain,  and  machines,  tools, 
and  kilns  for  manufacturing  and  enameling  the  same, 
including  lime  and  cement  kilns  and  peat  machines. 

151.  CLASS  IX.   COMPOSITIONS. — Artificial  substances 
formed  by  the  mechanical  or  chemical  combination  of 
different  ingredients, 

152.  CLASS  X.  FELTING  AND  HAT  MAKING. — Methods 
and  apparatus  for  felting  wool,  &c.,  and  the  making  and 
finishing  of  hats,  caps,  &c.,  including  implements  and 
machines  for  the  same. 

153.  CLASS  XI.   FINE  ARTS. — Methods  and  applica- 
tions of  music,  carving,  sculpture,  painting,  graining, 
engraving,  lithography,  wood-cutting,  &c.,  photography, 
bank-notes,  &c.,  jewelry,  including  instruments  and  ma- 
terials for  the  same. 

154.  CLASS  XII.   FIRE-ARMS. — Implements   of   war, 
offensive  and  defensive,  including  ammunition  and  its 
incidents,  and  blasting. 

155.  CLASS  XIII.    GLASS  MANUFACTURE. — Glass  fur- 
naces; molding,  blowing,  cutting,  grinding,  and  polish- 
ing glass,  and  implements  and  machines  for  the  same. 

156.  CLASS  XIV.    GRINDING   MILLS.  —  Machines   for 
breaking,  crushing,  and  grinding  materials,  including 
grain-cleaning,  flour-bolting,  &c.     (For  Mill-gearing,  see 
Class  XX.) 

157.  CLASS  XV.    HARVESTERS. — Implements  and  ma- 


CLASSIFICATION  OF  SUBJECTS  OF  INVENTION.  327 

chines  for  harvesting  and  securing  crops,  &c.    ( For  Hand 
Hay-rakes  and  Pitchforks,  see  Class  II.} 

158.  CLASS  XVI.    HOUSEHOLD  FURNITURE. — Articles, 
implements,  and  machines  for  domestic  purposes.     (For 
Culinary  Utensils,  see  Class  IV.} 

159.  CLASS  XVII.    HYDRAULICS  AND  PNEUMATICS. — 
Machines  and  apparatus  for  raising,  conveying,  and  di- 
recting water  and  other  fluids,  including  bottling,  and 
apparatus  for  controlling  and  operating  air,  &c. 

160.  CLASS  XVIII.    ILLUMINATION. — Implements  and 
devices  for  obtaining,  preserving,  and  regulating  artifi- 
cial illumination. 

161.  CLASS  XIX.  LEATHER  MANUFACTURES. — Machines 
and  tools  for  working  in  leather,  and  the  manufacture  of 
boots  and  shoes,  harness,  trunks,  belting,  and  including 
preparatory  processes,  cutting,  splitting,  &c. 

162.  CLASS  XX.  MECHANICAL  ENGINEERING. — General 
mechanical  movements,  horse-powers,  lifting  jacks,  hoist- 
ing apparatus,  mill-gearing,  &c.     (For  Presses,  see  Class 
XXVI.} 

163.  CLASS  XXI.  METALLURGY. — The  preparation  and 
treatment  of  ores,  reduction  and  purification  of  metals, 
and  processes  for  amalgamating,  electroplating,  and  me- 
tallic coating. 

164.  CLASS  XXII.    METAL  WORKING. — Methods,  ma- 
chines, and  tools  for  shaping  metals;   construction  of 
machines  and  articles  of  metal;  manufactured  articles 
of  metal. 

165.  CLASS  XXIII.  NAVIGATION. — The  construction  of 
vessels,  sails,  rigging,  propelling,  and  steering  apparatus, 
life-boats,  preservers,  rafts,  &c. 

166.  CLASS  XXIV.  PAPER  MAKING. — The  preparation 


328  PROCEDURE  IN  THE  PATENT  OFFICE. 

of  vegetable  pulp,  and  the  manufacture  of  paper,  papier 
mache,  pasteboard,  &c. 

167.  CLASS  XXV.    PHILOSOPHICAL   INSTRUMENTS,  in- 
cluding mathematical,  optical,  surveying,  and  nautical 
instruments;  philosophical  apparatus,  scales,  measures, 
and  instruments  of  precision  generally;  registering,  com- 
puting, signaling,  telegraphing,  and  the  application  of 
electricity  and  magnetism. 

168.  CLASS  XXVI.  PRESSES. — Machines  for  compress- 
ing articles   and   materials.     (For  Printing  Presses,  see 
Class  XXVIL] 

169.  CLASS  XXVII.  PRINTING  AND  STATIONERY. — Im- 
plements and  machines  for  printing,  type-setting,  and 
distributing;  type-founding  and  stereotyping,  stamping, 
&c. ;  machines  and  tools  for  ruling,  folding*,  and  cutting 
paper,  and  for  book-binding;  labels,  advertising  cards, 
writing  materials,  &c. 

170.  CLASS  XXVIII. — RAILROADS  AND  RAILROAD  CARS. 
The  construction  of  rails,  chairs,  switches,  &c.,  and  the 
rolling  stock  of  railroads.     (For  Engines  of  Locomotives, 
see  Class  XXXI.} 

171.  CLASS  XXTX.  SEWING  MACHINES. — Machines  for 
sewing,  stitching,  embroidering,  &c.,  and  the  incidents 
of  such  machines. 

172.  CLASS  XXX.  SPORTS,  GAMES,  AND  TOYS. — Gym- 
nastic apparatus,  appliances  for  archery,  fishing,  skating, 
&c. ;  plays,  games,  diversions,  and  implements  and  de- 
vices for  amusement. 

173.  CLASS  XXXI.   STEAM  AND  AIR  ENGINES. — Ma- 
chines for  the  application  of  vapor  or  gas  as  a  motor;  boil- 
ers and  other  apparatus  for  generating  the  same ;  govern- 
ors, steam  pumps,  and  feed  apparatus,  condensers,  &c. 


EXAMINATION  AND  AMENDMENT. 


329 


174.  CLASS  XXXII.  STONE  WORKING. — Machines  and 
tools  for  hewing,  cutting,  and  dressing  stone,  marble, 
granite,  slate,  &c. 

175.  CLASS  XXXIII.    SURGICAL  APPARATUS. — Instru- 
ments and  apparatus  for  the  mechanical  treatment  of 
bodily  infirmities,  injuries,  and  diseases,  and  for  assist- 
ing natural  functions,  including  artificial  limbs. 

176.  CLASS  XXXIV.  TEXTILE  MANUFACTURES. — The 
treatment  of  cotton,  flax,  hemp,  &c.;  wool,  hair,  silk, 
&c. ;  and  machinery  for  carding,  spinning,  cord  and  rope- 
making,  weaving,  knitting,  lace-making,  and  braiding. 

177.  CLASS  XXXV.  WEARING  APPAREL. — Articles  of 
clothing  and  methods  and  machines  for  making  the  same, 
including  articles  for  the  toilet,  &c.     (For  Nats,  see  Class 
X;  for  Boots  and  Shoes,  see  Class  XIX;  for  Sewing  Ma- 
chines, see  Class  XXIX.} 

178.  CLASS  XXXVI.  WOODWORKING. — Machines  and 
tools  for  felling  trees ;  hewing,  sawing,  planing,  bending, 
turning,   mortising,  dove-tailing,   and   splitting  wood; 
shingle  and  stave-cutting;   comb-sawing;  and  the  mak- 
ing of  blinds,  broom-handles,  tree-nails,  pegs,  match- 
splints,  &c. 


IX.  Examination  and  Amendment. 


"'  SEC. 
179. 


Examination  of  the  applica- 
tion. 

180.  Time  to  complete  application. 

181.  Order  of  examination. 

182.  Cases  which  have  precedence. 

183.  Cases  not  taken  np  out  of  turn. 
ISi.  Reference  given    upon    rejec- 
tion. 

28* 


SEC. 

185.  Information,  copies,  and  draw- 

ings furnished. 

186.  Applicant  may  demand  specific 

references. 

187.  Number    of    amendments    al- 

lowed. 

188.  Amendment  after  appeal  to  ex- 

aminers-in-chief. 


330 


PROCEDURE  IN  THE  PATENT  OFFICE. 


SEC. 

189.  Amendment    after    appeal    to 

the  Commissioner. 

190.  Special  amendments. 

191.  Requirements  of  amendment. 

192.  Division  of  the  application  may 

be  required. 

193.  Correction  of  specification  may 

be  required. 


SEC. 

194.  Specification   will   not  be  re- 

turned for  amendment. 

195.  Attendance  of  applicant. 

196.  Examiner    cannot    decline   to 

take  jurisdiction,  &c. 

197.  Executive,  ministerial,  and  ju- 

dicial functions  of  examiners. 

198.  Form  of  amendment. 


179.  EXAMINATION  OF  THE  APPLICATION. — On  the  filing 
of  an  application  and  the  payment  of  the  duty  required 
hy  law,  the  Commissioner  shall  cause  an  examination  to 
be  made  of  the  alleged  new  invention  or  discovery;  and 
if  on  such  examination  it  shall  appear  that  the  claimant 
is  justly  entitled  to  a  patent  under  the  law,  and  that  the 
same  is  sufficiently  useful  and  important,  the  Commis- 
sioner shall  issue  a  patent  therefor.     (Act  of  July  8, 1870, 
§31.) 

180.  TIME  TO  COMPLETE  AND  PREPARE  APPLICATIONS 
FOR  EXAMINATION. — All   applications  for   patents   shall 
be  completed  and  prepared  for  examination  within  two 
years  after  the  filing  of  the  petition,  and  in  default  there- 
of, or  upon  failure  of  the  applicant  to  prosecute  the  same 
within  two  years  after  any  action  therein,  of  which  notice 
shall  have  been,  given  to  the  applicant,  they  shall  be  re- 
garded as  abandoned  by  the  parties  thereto,  unless  it  be 
shown  to  the  satisfaction  of  the  Commissioner  that  such 
delay  was  .unavoidable.     (J6.,  §  32.) 

181.  APPLICATIONS  IN  GENERAL  EXAMINED  IN  REGULAR 
ORDER. — All  cases  in  the  Patent  Office  are  classified  and 
taken  up  for  examination  in  regular  order;  those  in  the 
same  class  being  examined  and  disposed  of,  as  far  as 
practicable,  in  the  order  in  which  the   respective  ap- 


EXAMINATION. AND  AMENDMENT.  331 

plications   are   completed.      (Patent   Office   Rides,  July, 
1870.) 

182.  CASES  WHICH  HAVE  PRECEDENCE. — "When  the  in- 
vention is  deemed  of  peculiar  importance  to  some  branch 
of  the  public  service,  and  when  for  that  reason  the  head 
of  some  department  of  the  Government  specially  requests 
immediate  action,  the  case  will  be  taken  up  out  of  its 
order.     These,  with  applications  for  reissues  and  for  let- 
ters patent  for  inventions  for  which  a  foreign  patent  has 
already  been  obtained,  which  cases  have  precedence  over 
original  applications,  are  the  only  exceptions  to  the  rule 
above  stated  in  relation  to  the  order  of  examination. 
(Ib.) 

183.  No  ORDER  WILL  BE  GRANTED  TO  TAKE  CASES  UP 
OUT  OF  TURN. — In  the  case  of  Hewins  v.  Spooner  the  Com- 
missioner says: 

"  In  the  course-of  the  testimony  a  letter  from  a  solicitor 
of  patents,  and  one  of  the  parties  named  above,  was  put 
in  evidence.  I  do  not  see  that  this  letter  is  relevant  to 
any  of  the  issues  of  this  case,  and  I  have  given  no  weight 
to  it  as  testimony.  I  refer  to  it  now,  as  the  publication 
of  this  opinion  affords  me  a  convenient  opportunity  of 
expressing  the  view  which  I  entertain  of  its  contents. 

"  The  letter  was  written  in  February,  18C9,  in  relation 
to  obtaining  the  second  patent  upon  the  Baldwin  meter. 
In  this  letter  the  writer  says:  'I  have  a  way  now  of  ob- 
taining the  allowance  of  a  patent  in  six  hours  after  it 
reaches  the  Patent  Office,  by  payment  of  $75;  and  I 
intend  to  have  large  fees  paid  me  in  excess  of  this  for 
accomplishing  this  sort  of  a  thing.' 

"  The  first  remark  which  this  statement  demands  is, 
that  it  is  false  in  fact.  Xo  solicitor  or  any  other  person 


332  PROCEDURE  IN  THE  PATENT  OFFICE. 

has  '  a  way  of  obtaining  the  allowance  of  a  patent  in  six 
hours  after  it  reaches  the  Patent  Office.'  Cases  are  re- 
ceived, recorded,  and  examined  in  their  regular  order. 
They  do  not  reach  the  examiner  until  a  day  or  two  after 
they  are  filed,  since  they  must  pass  through  other  rooms, 
where  the  fees  are  received,  the  cases  classified,  the  ap- 
plication completed,  the  files  made  up,  and  other  formal 
matters  attended  to.  The  examiners,  under  the  great 
pressure  of  the  numerous  applications  submitted  to  them, 
cannot  reach  a  new  case  under  a  week  or  two  after  it 
comes  into  their  rooms;  so  that,  under  the  most  favor- 
able circumstances,  the  thing  asserted  in  this  letter  is 
simply  impossible.  No  order  is  ever  granted  under  the 
present  administration  of  the  office  to  take  cases  up  out 
of  turn,  except  as  provided  in  the  printed  rules,  even 
when  inventors  have  come  to  "Washington  to  attend  to 
their  own  applications;  and  this  because  it  is  simply  just 
that  those  who  send  their  cases  to  the  office,  and  trust  to 
the  operation  of  its  rules,  shall  not  be  set  aside  at  the 
demand  of  the  clamorous  few  who  choose  to  attend  in 
person,  or  to  demand  special  privileges  by  friends  or  at- 
torneys. This  rule  is  imperative,  and  it  has  been  faith- 
fully and  rigidly  adhered  to. 

"But  the  writer  of  this  letter  intimates  that  this  just 
rule  may  be  set  aside  by  the  payment  of  money.  *  Cases 
may  go  through  in  six  hours,'  he  says,  '  by  the  payment 
of  $75 ; '  and  the  advantage  of  knowing  this  secret  he 
deems  to  be  so  great,  that  he  intends  '  to  have  large  fees ' 
paid  to  him  'for  accomplishing  this  sort  of  thing.'  This 
insinuation  is  also  false.  It  is  simply  a  libel  upon  the 
Patent  Office — a  libel  which  has  not  the  slightest  found- 
ation in  fact.  The  writer  never  had  a  patent  allowed  in 


EXAMINATION  AND  AMENDMENT.  333 

six  hours  after  the  application  reached  the  Patent  Office, 
and  he  never  paid  to  the  Patent  Office  or  any  officer  there- 
of $75  or  any  other  sum  to  secure  the  allowance  of  cases 
out  of  their  regular  order.  Inventors  ought  to  know  that 
if  they  are  foolish  and  wicked  enough  to  pay  their  money 
upon  such  pretenses,  it  will  never  reach  the  pockets  of 
the  Government  officials  for  whom  they  suppose  it  to  be 
designed.  It  goes  no  further  than  the  unscrupulous  at- 
torney or  agent,  who,  assuming  to  trade  upon  the  supposed 
corruption  of  sworn  officers,  is  willing  to  slander  honest 
men,  and  destroy  public  confidence  in  the  administration 
of  public  affairs,  in  order  that  he  may  enrich  himself  at 
the  expense  of  his  credulous  client.  Instances  have  come 
to  my  knowledge  where  money  has  been  extorted  from 
clients  by  agents  after  patents  had  actually  been  allow- 
ed, but  not  yet  issued,  upon  the  pretense  that  it  was  ne- 
cessary to  bribe  the  examiner.  I  know  of  no  case  where 
the  money  went  beyond  the  solicitor.  No  practitioner 
can  assert,  with  truth,  that  he  possesses  any  facilities  by 
which  he  is  enabled  to  procure  patents  in  advance  of  any 
of  his  competitors,  beyond  his  knowledge  of  the  forms 
and  routine  of  the  office  and  his  skill  and  care  in  the 
preparation  of  his  cases.  To  take  money  from  his  cli- 
ents, under  the  pretense  that  it  is  to  be  used  to  procure 
such  facilities,  is  to  add  theft  to  falsehood."  (Commission- 
ers' Decisions,  September  13,  1870.) 

184.  REFERENCE  GIVEN  UPON  REJECTION. — Whenever, 
on  examination,  any  claim  for  a  patent  is  rejected,  for  any 
reason  whatever,  the  Commissioner  shall  notify  the  ap- 
plicant thereof,  giving  him  briefly  the  reasons  for  such 
rejection,  together  with  such  information  and  references 
as  may  be  useful  in  judging  of  the  propriety  of  renew- 


334  PROCEDURE  IN  THE  PATENT  OFFICE. 

ing  his  application  or  of  altering  his  specification ;  and 
if,  after  receiving  such  notice,  the  applicant  shall  persist 
in  his  claim  for  a  patent,  with  or  without  altering  his 
specifications,  the  Commissioner  shall  order  a  re-exam- 
ination of  the  case.  (Act  of  July  8, 1870,  §  41.) 

185.  INFORMATION,  COPIES,  AND  DRAWINGS  FURNISHED. 
Upon  the  rejection  of  an  application  for  want  of  novelty, 
the  applicant  will  be  furnished  with  a  specific  reference 
(by  name,  date,  and  class)  to  the  article  or  articles  by 
which  it  is  anticipated.     If  he  desires  a  copy  of  the  cases 
so  referred  to,  or  of  the  plates  or  drawings  connected 
with  them,  they  will  be  forwarded  to  him,  if  in  posses- 
sion of  the  office,  on  payment  of  the  cost  of  making  such 
copies. 

When  the  rejection  of  an  application  is  founded  upon 
another  case  previously  rejected,  but  not  withdrawn  or 
abandoned,  the  applicant  will  be  furnished  with  all  in- 
formation in  relation  to  the  previously  rejected  case 
which  is  necessary  for  the  proper  understanding  and 
management  of  his  own.  (Patent  Office  Rules,  July,  1870.) 

186.  APPLICANT  MAY  DEMAND  SPECIFIC  REFERENCES. — 
In  the  case  of  Ellis  and  Albertson  ex  parte,  the  Commis- 
sioner says:  "The  applicants  state  that  they  have  invent- 
ed a  new  and  useful  improvement '  in  hoes,  rakes,  and 
similar  implements,'  consisting  of  a  mode  of  attaching 
hoes,  rakes,  and  similar  implements  to  their  shanks,  &c., 
'whereby  a  very  firm  and  secure  attachment  is  obtained, 
and  one  which  will  admit  of  the  hoe,  rake,  or  other  tool 
being  set  at  any  desired  angle  with  the  shank  or  handle,' 
«fec.     The  examiner  replies  that  the  devices  'are  old  and 
well-known  mechanical  expedients,  such  as  are  employed 
by  artisans  in  various  branches  of  mechanical  pursuits. 


EXAMINATION  AND  AMENDMENT.  335 

Carpenters  and  others  use  it  for  attaching  center  and 
other  bits  to  braces;  also  for  adjusting  gauges  and  other 
implements.'  This  reference  was  general,  and  might,  upon 
request  of  the  applicant,  have  been  made  more  specific. 
Unchallenged,  however,  it  fully  answers  the  claim." 
(Commissioners'  Decisions,  1869,  p.  8.) 

In  the  case  of  Schneider  ex  parte,  the  Commissioner  says : 
"Applicant  claims  'a  gilt  beading  or  molding,  either 
around  the  inner  edge  of  a  wooden  frame  or  paper  mat, 
or  around  the  outside  of  the  frame,  when  spun  thereon 
from  a  flat  metal  band,  for  the  purpose  substantially  as 
described.'  This  claim  is  somewhat  awkwardly  worded, 
but  it  sufficiently  appears  that  the  invention  claimed  is 
in  substance  a  picture  frame,  with  a  metal  bead  spun 
upon  the  inner  or  outer  edge  from  a  flat  band.  The  ex- 
aminer does  not  assume  to  anticipate  the  invention  pre- 
cisely as  claimed,  but  states  the  mode  of  spinning  metal 
beads  to  be  old  in  other  branches  of  art,  and  affirms  that 
a  frame  with  a  gilt  bead  is  old.  I  do  not  understand  the 
declaration  of  the  examiner  to  go  to  the  extent  of  de- 
claring that  the  gilt  metal  bead  is  old  as  applied  to  pic- 
ture frames.  This  construction  of  his  language  is  ex- 
pressly denied  by  the  applicant,  and  if  the  examiner  had 
taken  exception  to  this  denial,  he  should  have  furnished 
a  specific  reference. 

"As  the  case  is  presented,  I  am  of  the  opinion  that  a 
picture  frame  made  in  the  manner  described  possesses 
patentable  novelty  as  a  new  article  of  manufacture." 
(Commissioners'  Decisions,  1869,  p.  24.) 

187.  NUMBER  OF  AMENDMENTS  ALLOWED. — The  appli- 
cant has  a  right  to  amend,  of  course,  after  the  first  rejec- 
tion ;  and  he  may  amend  as  often  as  the  examiner  pre- 


336        PROCEDURE  IN  THE  PATENT  OFFICE. 

sents  any  new  references.  There  must  be  two  rejections 
upon  the  claim  as  originally  filed,  or,  if  amended,  (in  a 
matter  of  substance,)  upon  the  amended  claim,  in  order  to 
close  the  case  before  the  primary  examiner,  and  render, 
in  case  further  action  is  required,  an  appeal  to  the  board 
of  examiners-iu-chief  necessary.  (Patent  Office  Rules,  July, 
1870.) 

In  the  case  of  Alice  Appleton  ex  parte,  the  Commissioner 
says:  "The  applicant  complains  that  after  her  appeal  to 
the  board  of  examiners-in-chief  the  case  was  examined  a 
third  time,  without  her  knowledge,  and  new  references 
were  given,  which  were  considered  by  the  examiners-in- 
chief  in  forming  their  judgment  of  the  case.  This  com- 
plaint is  sustained  by  the  record,  which  shows  that  an 
appeal  was  taken  to  the  board  of  examiners-in-chief  Jan- 
uary 24,  1868,  on  which  day  her  counsel  filed  his  brief; 
that  on  February  28, 1868,  the  examiner  notified  the  ap- 
plicant that  the  case  had  been  re-examined,  and  gave 
new  references,  one  to  common  household  practices  and 
another  to  the  patent  of  C.  E.  Kil  bourne,  August  27, 
1867,  and  that  on  March  9,  1868,  the  examiners-in-chief 
proceeded  to  judgment  in  the  case. 

"  This  course  was  undoubtedly  irregular.  After  a  first 
rejection,  the  applicant  may  insist  upon  his  claim  as  pre- 
sented. If  the  examiner  reafiirms  his  former  decision, 
without  supporting  it  with  fresh  references,  the  rejection 
is  final,  and  there  is  no  remedy  but  appeal.  But  if  the 
examiner  gives  new  references,  the  applicant  has  a  right 
to  reply  to  them,  or  to  amend  his  specification  by  reason 
of  them,  if  he  desires  to  do  so.  When  he  has  appealed, 
the  case  is  closed  before  the  primary  examiner,  unless  it 
be  regularly  remanded,  with  leave  to  amend  or  with  di- 


EXAMINATION  AND  AMENDMENT.  337 

rections  for  further  examination.  If  it  be  so  remanded, 
the  case  is  re-opened  below,  and  cannot  return  to  the 
appellate  tribunal  until  the  applicant  has  responded  to 
the  new  examination,  either  by  amendment  or  fresh  ap- 
peal. 

"The  applicant  in  this  case  has  therefore  a  clear  right 
of  amendment,  in  view  of  the  references  contained  in 
the  third  letter  of  the  examiner. 

"As  the  case  now  stands,  I  understand  the  examiner 
to  affirm  that  the  mode  already  in  use  of  connecting  knit 
goods  in  common  household  practice  is  by  a  crochet 
stitch,  substantially  the  same  as  that  of  applicant.  This 
applicant  does  not  deny  upon  the  record,  and  as  no  means 
of  comparison  are  furnished,  the  statement  of  the  exam- 
iner must  be  accepted  as  true. 

"  The  decision  of  the  board  of  examiners-in-chief  is 
affirmed,  with  leave  to  the  applicant  to  move  to  remand 
the  case  to  attbrd  opportunity  for  amendment."  (Com- 
missioners' Decisions,  1869,  p.  8.) 

188.  AMENDMENTS  AFTER  APPEAL   TO  EXAMINERS-IN- 
CHIEF. — When  the  applicant  has  appealed  the  case  is 
closed  before  the  primary  examiner,  unless  it  be  regu- 
larly remanded,  with  leave  to  amend,  or  with  directions 
for  further  examination.     If  it  be  so  remanded,  the  case 
is  reopened  below,  and  cannot  return  to  the  appellate 
tribunal  until  the  applicant  has  responded  to  the  new 
examination,  either  by  amendment  or  fresh  appeal ;  and 
after  the  decision  of  the  board  the  primary  examiner  can- 
not reconsider  the  case  without  an  order  from  the  Com- 
missioner.    (Duthie  v.  Casilear,  Commissioners'-  Decisions, 
September  15,  1870.) 

189.  AMENDMENTS  AFTER  APPEAL   TO   THE    COMMIS- 

29 


338  PROCEDURE  IN  THE  PATENT  OFFICE. 

SIGNER. — When  amendments  are  admitted  while  an  ap- 
peal to  the  Commissioner  is  pending,  the  case  should 
be  again  submitted  to  the  examiner  for  investigation. 
(Perry  v.  Lay,  Commissioners'  Decisions,  1869,  p.  3.) 

In  the  case  of  Cree  ex  parte,  the  Acting  Commissioner 
says :  "  So  far,  then,  as  the  references  go,  it  must  be 
judged  that  applicant  is  entitled  to  a  patent  upon  his 
peculiar  bale.  The  present  claim,  however,  is  objec- 
tionable. There  is  no  relation  between  this  special  con- 
struction of  bale  and  the  adjustable  clasp  around  the 
neck  of  the  bottle.  The  function  of  the  two  are  entirely 
distinct,  and  they  cannot  properly  be  claimed  in  combi- 
nation. For  this  reason  the  decision  of  the  examiners- 
in-chief  is  affirmed,  but  with  leave  to  applicant  to  amend 
his  claim  and  specification  before  the  primary  examiner." 
(Commissioners'  Decisions,  August  3,  1870.) 

190.  SPECIAL  AMENDMENTS. — After  a  second  rejection, 
and  at  any  time  before  the  issue  of  the  patent,  the  appli- 
cant may  draw  up  special  amendments  and  present  the 
same  to  the  Assistant  Commissioner,  who  may,  in  his 
discretion,  grant  leave  to  make  such  special  amendments, 
and  allow  a  reconsideration  by  the  examiner  in  charge. 
But  such  amendments  shall  first  be  submitted  to  the  ex- 
aminer, in  order  that  he  may  indorse  thereon  his  recom- 
mendation or  objections.    (Patent  Office  Rules,  July,  1870.) 

191.  REQUIREMENTS  OF  THE  AMENDMENT. — All  amend- 
ments of  the  model,  drawings,  or  specification,  in  the 
case  of  original  applications,  must  conform  to  at  least 
one  of  them  as  they  were  at  the  time  of  the  filing  of 
the  application ;  and  all  amendments  of  specifications  or 
claims  must  be  made  on  separate  sheets  of  paper  from 
the  original,  and  must  be  filed  in  the  manner  above  di- 


EXAMINATION  AND  AMENDMENT.  339 

rected.  Even  when  the  amendment  consists  in  striking 
out  a  portion  of  the  specification  or  other  paper,  the 
same  course  should  be  observed.  No  erasure  must  be 
made  by  the  applicant.  The  papers  must  remain  for- 
ever as  they  were  when  filed,  so  that  a  true  history  of  all 
that  has  been  done  in  the  case  may  be  gathered  from 
them.  In  every  case  of  amendment  the  exact  word  or 
words  to  be  stricken  out  or  inserted  should  be  clearly 
specified,  and  the  precise  point  indicated  where  any 
insertion  is  to  be  made.  (Ib.) 

192.  THE  APPLICANT  MAY  BE  REQUIRED  TO  DIVIDE  His 
APPLICATION,  (vide  supra,  p.  255.) — In  the  case  of  Lehman 
ex  parte  (Commissioners'  Decisions,  July  23, 1870)  the  Com- 
missioner says:  "Applicant  files  a  specification  of  twenty- 
four  pages,  with  nineteen  claims,  accompanied  by  four 
sheets  of  drawings,  constituting  an  application  for  a  com- 
bined agricultural  implement,  which  consists  of  a  com- 
bined sower,  cultivator,  hay-rake,  and  corn-planter.  Some 
of  the  claims  relate  to  the  combination  of  these  machines, 
and  others  to  improvements  in  the  individual  machines, 
which  have  no  reference  to  the  combination,  and  which 
are  capable  of  use  upon  any  machines  of  their  respective 
classes. 

"  Combined  implements  which  use  certain  parts  in 
common,  and  so  save  the  expense  of  duplicating  such 
parts,  are  becoming  more  and  more  common.  They  are 
useful,  and,  if  new,  are  undoubtedly  patentable.  The 
combinations  themselves,  and  all  the  parts  which  neces- 
sarily relate  to  such  combinations,  may,  no  doubt,  be 
included  in  one  patent,  so  that  the  subject-matter  of  the 
patent,  and  of  all  its  claims,  shall  have  reference  to  the 
combined  machine. 


340  PROCEDURE  IN  THE  PATENT  OFFICE. 

"  When,  however,  the  applicant  seeks  to  include  in  the 
same  grant  independent  improvements  in  the  individual 
machines  composing  the  combination,  which  improve- 
ments have  nothing  to  do  with  the  combination,  but  are 
of  general  application,  it  is  manifest  that  he  is  entitled 
to  no  more  favor  than  if  he  attempted  to  patent  improve- 
ments upon  two  independent  and  uncombined  machines 
under  one  grant.  To  permit  this  would  be  a  fraud  upon 
the  Government,  and  would  utterly  destroy  all  attempts 
at  classification.  This  matter  is  fully  discussed  in  Linus 
Yale's  Case.  (Commissioners'  Decisions,  1869,  p.  110.)" 

193.  EXAMINER  MAY  REQUIRE  CORRECTION  AND  REVIS- 
ION OF  SPECIFICATION. — The  specification,  especially  if 
the  claim  be  amended,  must  be  amended  and  revised, 
if  required  by  the  examiner,  for  the  purpose  of  correct- 
ing inaccuracies  of  language  or  unnecessary  prolixity, 
and  of  securing  correspondence  between  the  description 
of  the  invention  and  the  claim.  (Patent  Office  Rules,  July, 
1870.) 

But  the  decision  of  the  examiner  upon  such  prelim- 
inary or  intermediate  questions,  or  refusals  to  act,  twice 
repeated,  or  the  determination  of  the  questions  of  title, 
the  number  of  amendments,  the  structure  of  the  specifi- 
cation, the  correspondence  of  the  drawing  with  the 
model  or  the  written  description,  and  the  accuracy  and 
completeness  of  the  description,  will  be  re-examined, 
upon  application,  by  the  Commissioner  in  person,  under 
the  rule  of  the  Patent  Office  which  provides  that  "  de- 
cisions of  examiners  upon  preliminary  or  intermediate 
questions,  or  refusals  to  act,  twice  repeated,  will  be  re- 
examined,  upon  application,  by  the  Commissioner  in 
person."  (Patent  Office  Rules,  July,  1870;  Krake  exparte, 


EXAMINATION  AND  AMENDMENT.  341 

Commissioners'  Decisions,  1869,  p.  100 ;  Smyth  ex  parte, 
Commissioners'  Decisions,  July  23, 1870;  Lehman  ex  parte, 
Ib.,  July  23, 1870 ;  Nichols  ex  parte,  2b.) 

194.  SPECIFICATIONS  WILL    NOT    BE    RETURNED  FOR 
AMENDMENT. — The  office  will  not  return  specifications 
for  amendment;    and  in  no  case  will  any  person  be 
allowed  to  take  any  papers,  drawings,  models,  or  sam- 
ples from  the  office.     If  applicants  have  not  preserved 
copies  of  such  papers  as  they  wish  to  amend,  the  office 
will  furnish  them  on  the  usual  terms.   (Patent  Office  Rules, 
July,  1870.) 

195.  ATTENDANCE  OF  APPLICANT  NOT  REQUIRED. — The 
personal  attendance  of  the  applicant  at  the  Patent  Office 
is  unnecessary.     The  business  can  be  done  by  corres- 
pondence or  by  attorney.     (Ib.} 

196.  EXAMINER  CANNOT  DECLINE  TO  TAKE  JURISDICTION 
ON  THE  GROUND  THAT  A  CASE  is  RES  ADJUDICATA. — In  the 
case  of  D.  M.  Nichols  ex  parte,  the  Commissioner  says : 
"  If  the  claims  in  the  new  application  had  differed  from 
those  previously  considered  by  the  board,  there  would 
be  no  doubt  of  the  jurisdiction  of  the  examiner.     They 
were  properly  before  him  for  some  consideration.     In 
the  course  of  his  examination  he  found  them  to  be  sub- 
stantially the  same  as  claims  previously  rejected  by  the 
appellate  tribunal.     They  were  not  the  same  claims,  but 
claims  in  effect  the  same.     The  examiner  was,  therefore, 
right  in  saying  that  the  question  of  their  patentability 
was  res  adjudicata.     He  should,  therefore,  have  rejected 
the  claims  for  lack  of  patentability  on  the  authority  of 
the  former  decision  of  the  board.     The  question  would 
then  have  been  appealable  to  the  board,  to  determine 
whether,  in  fact,  their  objections  to  the  former  claims 

29* 


342  PKOCEDUKE  IN  THE  PATENT  OFFICE. 

applied  equally  to  these.  I  do  not  think  the  examiner 
could  properly  decline  to  take  jurisdiction."  (Commis- 
sioners' Decisions,  July  23,  1870.) 

197.  EXECUTIVE,  MINISTERIAL,  AND  JUDICIAL  FUNC- 
TIONS OF  PRIMARY  EXAMINERS. — The  examiners  and  the 
Commissioner  act  continually  in  a  double  capacity.  They 
are  executive  officers,  having  certain  duties  to  perform, 
in  relation  to  every  application,  of  a  purely  executive 
character.  Some  of  these  duties  are  purely  ministerial, 
and  others,  while  strictly  executive,  require  the  exercise 
of  discretion.  Thus,  the  reception  of  the  application 
and  of  the  fee,  the  act  of  examination,  the  record  of  the 
patent,  and  the  signing  and  the  sealing,  are  ministerial; 
while  the  determination  of  the  question  of  title,  the 
number  of  amendments,  the  structure  of  the  specifica- 
tion, the  correspondence  of  the  drawings  with  the  model 
or  the  written  description,  and  the  accuracy  or  com- 
pleteness of  the  description,  are  executive  acts,  although 
discretion  is  exercised  in  their  performance.  The  judg- 
ments of  the  examiner,  or  of  the  Commissioner,  upon 
what  may  be  called  the  merits,  the  questions  of  patent- 
ability, of  novelty,  and  utility,  are  judicial  acts ;  and  it  is 
when  sitting  to  determine  these  and  questions  of  like 
character  that  these  officers  become  quasi  judges.  The 
board  of  examiners-in-chief,  on  the  other  hand,  act  only 
in  an  appellate  and  judicial  capacity.  They  are  not,  by 
law,  vested  with  any  executive  duties,  except  as  they 
may  be  included  in  "  such  other  duties  as  may  be  as- 
signed to  them  by  the  Commissioner."  From  the  judi- 
cial acts  of  the  examiner  an  appeal  lies  to  the  board ; 
from  his  executive  acts  the  appeal  is  to  the  Commissioner. 
An  appeal  from  his  decision  upon  the  merits  does  not 


RENEWAL  OF  APPLICATION. 


343 


cany  with  it  his  action  upon  executive  matters.     (John 
A.  Krake  ex  parte,  Commissioners'  Decisions,  1869,  p.  100.) 
198.  FORM  OF  AMENDMENT. — 

WASHIKGTOJST,  D.  C.,  July  20, 1869. 
To  the  Commissioner  of  Patents: 

In  the  matter  of  my  application  for  letters  patent  for  an  improvement 
in  wagon  brakes,  I  hereby  amend  my  specification,  by  striking  out  all  be- 
tween the  ninth  and  twentieth  lines,  inclusive,  on  page  3,  by  inserting 
the  words  " connected  with"  after  the  word  "and,"  in  the  first  line  of  the 
second  claim,  and  by  striking  out  the  third  claim  and  substituting  therefor 
the  following : 

3.  The  combination  of  the  self-acting  brake  C,  pin  A,  and  slotted  flanges 
D,  substantially  as  described  and  for  the  purposes  set  forth. 

HENRY  RICHAKDS, 
By  MILTON  MEADOWS, 

His  attorney  in  fact. 


X.  Renewal  of  an  Application  upon  which  the  Final 
Fee  has  not  been  Paid. 


SEC. 

199.  Consequence  of   neglecting  to 

pay  the  final  fee. 

200.  Who  may  petition  for  renewal. 

201 .  Renewed  application  to  be  made 

within  two  years. 


SEC. 

202.  New  specification,  Ac.,  not  re- 

quired. 

203.  When  an  interference  will  be 

declared. 

204.  Form  of  petition  for  renewal. 


199.  CONSEQUENCE  OF  NEGLECTING  TO  PAY  THE  FINAL 
FEE  WITHIN  Six  MONTHS  FROM  NOTIFICATION  OF  ALLOW- 
ANCE.— Every  patent  shall  date  as  of  a  day  not  later  than 
six  months  from  the  time  at  which  it  was  passed  and 
allowed,  and  notice  thereof  Was  sent  to  the  applicant  or 
his  agent ;  and  if  the  final  fee  shall  not  be  paid  within 
that  time  the  patent  shall  be  withheld.  (Act  of  July  8, 
1870,  §  23.) 

The  final  fee  on  issuing  a  patent  must  be  paid  within 


344  PROCEDURE  IN  THE  PATENT  OFFICE. 

six  months  after  the  time  at  which  the  patent  was  al- 
lowed and  notice  thereof  sent  to  the  applicant  or  his 
agent.  And  if  the  final  fee  for  such  patent  be  not  paid 
within  that  time,  the  patent  will  be  forfeited,  and  the 
invention  therein  described  become  public  property,  as 
against  the  applicant  therefor,  unless  he  shall  make  a 
new  application  therefor  within  two  years  from  the  date 
of  the  original  allowance.  (Patent  Office  Rules,  July, 
1870.) 

200.  WHO  MAY  PETITION  FOR  RENEWAL  OF  THE  APPLI- 
CATION.— Any  person  who  has  an  interest  in  an  inven- 
tion or  discovery,  whether  as  inventor,  discoverer,  or 
assignee,  for  which  a  patent  was  ordered  to  issue  upon 
the  payment  of  the  final  fee,  but  who  has  failed  to  make 
payment  thereof  within  six  months  from  the  time  at 
which  it  was  passed  and  allowed  and  notice  thereof  was 
sent  to  the  applicant  or  his  agent,  shall  have  a  right  to 
make  an  application  for  a  patent  for  such  invention  or 
discovery,  the  same  as  in  the  case  of  an  original  applica- 
tion.    (Act  of  July  8,  1870,  §  35.) 

201.  RENEWED  APPLICATION  TO  BE  MADE  WITHIN  Two 
YEARS  FROM  NOTIFICATION  OF  ALLOWANCE. — The  second 
application  must  be  made  within  two  years  after  the 
allowance  of  the  original  application.     But  no  person 
shall  be  held  responsible  in  damages  for  the  manufacture 
or  use  of  any  article  or  thing  for  which  a  patent,  as  afore- 
said, was  ordered  to  issue  prior  to  the  issue  thereof.    (Ib.) 

202.  NEW  SPECIFICATION,  &c.,  NOT  REQUIRED. — It  is  not 
necessary  for  the  applicant  to  file  a  new  specification, 
oath,  model,  or  drawing,  on  petitioning  for  the  renewal 
of  an  application  upon  which  the  final  fee  has  not  been 
paid.     The  proper  course  will  be  to  file  a  petition,  stating 


RENEWAL  OF  WITHDRAWN  APPLICATIONS. 


345 


the  date  of  the  filing  of  the  original  application,  and  the 
date  of  the  notification  of  allowance,  and  praying  that 
the  original  specification,  oath,  drawings,  and  model  be 
used  as  a  part  of  the  renewed  application. 

203.  WHEN  AN  INTERFERENCE  WILL  BE  DECLARED. — Upon 
considering  the  renewed  application,  if  it  be  found  that 
applications  have  been  made,  or  unexpired  patents  have 
been  granted,  in  which  the  device  in  controversy  has 
been  described  or  claimed,  an  interference  will  be  de- 
clared between  such  applications  or  patents  and  such 
renewed  application,  in  order  that  an  opportunity  may 
be  given  for  the  production  of  proof  of  abandonment  or 
two  years'  public  use,  if  either  exist.     (Patent  Office  Rules, 
July,  1870.) 

204.  FORM  OF  PETITION  FOR  THE  RENEWAL  OF  AN  AP- 
PLICATION.— 

To  the  Commissioner  of  Patents: 

Your  petitioner  represents  that  on  May  8,  1868,  he  filed  an  application 
for  letters  patent  for  an  improvement  in  churns,  which  application  was 
allowed  July  7,  1868,  but  that  he  failed  to  make  payment  of  the  final  fee. 
He  now  makes  renewed  application  for  letters  patent  for  said  invention, 
and  prays  that  the  original  specification,  oath,  drawings,  and  model  may 
be  used  as  a  part  of  this  application.  SIMON  SLOTHFUL. 


XI.  Renewal  of  "Withdrawn  and  Rejected  Applications 
filed  prior  to  July  8,  1870. 


SEC. 

205.  Consequences  of  neglect  to  re- 

new application. 

206.  New    application,    formal    re- 

newal. 


SEC. 

207.  Applications  in  interference. 

208.  Intent  of  the  act. 

209.  Petition  to  be  accompanied  by 

a  demand  for  action. 


205.  CONSEQUENCES  OF  NEGLECT  TO  RENEW  APPLICATION. 
When  an  application  for  a  patent  has  been  rejected  or 


346  PROCEDURE  IN  THE  PATENT  OFFICE. 

withdrawn  prior  to  the  passage  of  the  act  of  July  8, 
1870,  the  applicant  shall  have  six  months  from  the  date 
of  such  passage  to  renew  his  application  or  to  file  a  new 
one;  and  if  he  omit  to  do  either,  his  application  shall  be 
held  to  have  been  abandoned.  Upon  the  hearing  of  such 
renewed  applications  abandonment  shall  be  considered  as 
a  question  of  fact,  (Act  of  July  8,  1870,  §  35.) 

206.  NEW  APPLICATION,  FORMAL  RENEWAL. — The  prop- 
er course  will  be,  where  the  application  has  been  with- 
drawn, to  file  a  new  application;  and  where  it  has  been 
rejected  but  not  withdrawn,  to  file  a  formal  renewal,  with 
or  without  amendment,  as  the  status  of  the  application 
with  reference  to  previous  action  may  require.     (Patent 
Office  Rules,  July,  1870.) 

207.  WHEN  RENEWED  APPLICATIONS  WILL  BE  PLACED  IN 
INTERFERENCE. — Upon  considering  such  renewed  appli- 
cations of  either  class,  if  it  be  found  that  applications 
have  been  made  or  unexpired  patents  have  been  granted 
in  which  the  device  in  controversy  has  been  described  or 
claimed,  an  interference  will  be  declared  between  such 
applications  or  patents  and  such  renewed  application,  in 
order  that  an  opportunity  may  be  given  for  the  produc- 
tion of  proof  of  abandonment  or  two  years'  public  use, 
if  either  exist.     (Ib-) 

208.  INTENT  OF  THE  ACT. — In  the  case  of  Millspaugh  ex 
parte  the  Commissioner  says :  "  In  this  case  the  attorneys 
for  applicant  file  the  following  paper: 

"In  the  matter  of,"  &c.,  "fifed  September  20, 1869,  and 
rejected  by  the  board  of  examiners  June  25,  1870,  we 
beg  leave  to  renew  the  same,  in  accordance  with  act  of 
Congress  relating  to  patents  approved  July  8,  1870,  and 
to  retain  model,  drawing,  and  papers  heretofore  filed,  to 


RENEWAL  OF  WITHDRAWN  APPLICATIONS.  347 

constitute  the  renewed  application.  The  case  is  respect- 
fully submitted  to  the  board  of  appeal  for  their  further 
action." 

This  paper  is  similar  to  a  large  number  filed  by  various 
attorneys,  except  that  the  last  paragraph  is  usually  omit- 
ted. Some  seem  to  suppose  that  the  effect  of  such  a  re- 
quest is  to  begin  the  case  de  novo,  while  others  imagine 
that  by  filing  such  a  paper  they  "keep  the  case  alive"  for 
two  years,  during  which  time  they  may  or  may  not  take 
or  request  further  action.  Both  opinions  are  errors.  The 
act  of  July  8,  1870,  §  35,  was  intended  for  no  such  pur- 
poses. The  sole  intent  of  the  second  proviso  of  that  sec- 
tion is,  1.  To  permit  withdrawn  cases  to  be  refiled,  in 
which  case,  of  course,  they  begin  de  novo;  and,  2.  To 
permit  rejected  cases  to  be  renewed,  that  is,  to  be  revived 
and  continued  under  the  new  law.  (Commissioners'  De- 
cisions, September  21, 1870.) 

209.  PETITION  TO  BE  ACCOMPANIED  BY  A  DEMAND  FOR 
ACTION. — "  The  prayer  for  renewal  is  a  prayer  for  further 
action,  and  the  effect  of  it  is  simply  to  demand  such  ac- 
tion as  shall  set  the  case  in  motion.  Section  32  provides 
'that  all  applications  for  patents  shall  be  completed  and 
prepared  for  examination  within  two  years  after  the  filing 
of  the  petition,  and  in  default  thereof,  or  upon  failure  of 
the  applicant  to  prosecute  the  same  within  two  years  after 
any  action  therein,  of  which  notice  shall  have  been  given  to 
the  applicant,  they  shall  be  regarded  as  abandoned  by  the 
parties  thereto,'  &c.  It  will  be  observed  that  the  two 
years  run,  not  from  action  by  the  applicant,  but  action 
'  of  which  notice  shall  have  been  given  to  the  applicant,' 
/.  e.,  action  by  the  office. 

"  The  petition  for  renewal  is  but  a  part  of  the  action  uec- 


348  PROCEDURE  IN  THE  PATENT  OFFICE. 

essary  on  behalf  of  the  applicant  to  revive  his  case.  To 
complete  that  action  and  make  it  effectual  his  petition 
must  be  accompanied  with  a  specific  demand  for  such 
proposed  action  as  the  status  of  the  case  may  require. 
Thus,  if  the  case  has  been  but  once  rejected,  the  petition 
for  renewal  must  be  accompanied  by  a  demand  for  a  sec- 
ond examination,  or  by  an  amendment.  If  it  has  been 
twice  rejected,  the  petition  will  accompany  the  appeal  or 
the  prayer  to  the  Commissioner  for  further  leave  to  amend. 
If  it  has  been  rejected  by  the  board,  the  petition  must  be 
filed  with  the  appeal  to  the  Commissioner.  If  it  has  been 
rejected  by  the  Commissioner,  there  can  be  no  renewal, 
unless  an  appeal  to  the  supreme  court  of  the  District  of 
Columbia  has  been  taken. 

''Petitions for  renewal  do  not  differ,  in  this  respect,  from 
the  petition  for  an  original  or  reissued  patent,  or  for  the 
renewal  of  an  application  upon  which  the  final  fee  has 
not  been  made  for  an  extension  or  for  an  appeal.  In  all 
of  these  cases  action  is  proposed  or  requested,  which  it 
is  expected  the  office  will  proceed  to  make  with  reason- 
able diligence. 

"I  hold,  therefore,  that  the  filing  of  a  naked  petition  for 
the  removal  of  a  rejected  application  does  not  of  itself 
renew  the  case ;  and  that  if  such  petition  is  not  accom- 
panied or  followed  up  by  a  demand  for  the  action  appro- 
priate to  the  next  stage  beyond  that  at  which  the  renewal 
finds  it,  the  case  will,  after  January  8, 1871,  be  treated  as 
abandoned."  (76.) 


APPEAL  TO  EXAMINERS-IN-CHIEF. 


349 


XII.  Appeal  to  Examiners-in-Chief. 


SEC. 

210.  Duties  of  examiners-in-chief. 

211.  R6sum6  of  the  laws  constituting 

the  board. 

212.  Examiners  to  be  governed  by 

decisions  of  the  Commissioner. 

213.  When  applicant  may  appeal. 

214.  Judicial  and  executive  acts. 

215.  Adverse  decisions  only  revised. 

216.  No  rehearing  allowed  except 

upon  order  of  Commissioner. 

217.  Primary  examiner  cannot  re- 

consider without  Commission- 
er's order. 


SEC. 

218.  Case  may  be  remanded  for  fur- 

ther examination. 

219.  Delegated  discretion. 

220.  Commissioner    may    withhold 

patent  after  favorable  decis- 
ion. 

221.  Petition  to  set  forth  reasons  of 

appeal. 

222.  Form  of  appeal  from  exam- 

iner. 

223.  Form  of   appeal   from   exam- 

iner in  charge   of   interfer- 
ences. 


210.  DUTIES  or  EXAMINERS-IN-CHIEF. — The  examiners- 
in-chief  shall  be  persons  of  competent  legal  knowledge 
and  scientific  ability,  whose  duty  it  shall   be,  on  the 
written  petition  of  the  appellant,  to  revise  and  determine 
upon  the  validity  of  the  adverse  decisions  of  examiners 
upon  applications  for  patents,  and  for  reissues  of  patents, 
and  in  interference  cases;  and,  when  required  by  the 
Commissioner,  they  shall  hear  and  report  upon  claims 
for  extensions,  and  perform  such  other  like  duties  as  he 
may  assign  them.     (Act  of  July  8, 1870,  §  10.) 

211.  RESUME  OF  THE  LAWS  CONSTITUTING  THE  BOARD 
OF  EXAMINERS-IN-CHIEF. — Examiners  are  first  named  in 
the  act  of  1836,  in  which  provision  is  made  for  the  ap- 
pointment of  one  who  is  called  "an  examining  clerk." 
Their  duties  are  nowhere  mentioned  in  the  law,  except  as 
they  may  be  supposed  to  be  alluded  to  in  the  seventh 
section  of  the  same  act,  where  it  is  said  that  "  the  Com- 
missioner shall  make,  or  cause  to  be  made,  an  examina- 

30 


350  PROCEDURE  IN  THE  PATENT  OFFICE. 

tion  of  the  alleged  new  invention  or  discovery,  and  if, 
on  any  such  examination,  it  shall  not  appear  to  the  Com- 
missioner, &c.,  if  the  Commissioner  shall  deem  it  to  be 
sufficiently  useful  and  important,  it  shall  be  his  duty  to 
issue  a  patent  therefor." 

Prior  to  the  passage  of  the  act  of  1861,  a  board  of  ap- 
peal, consisting  of  three  principal  examiners,  had  been 
appointed  by  the  Commissioner  for  the  purpose  of  reliev- 
ing him  from  the  labor  of  hearing  appeals,  whose  decis- 
ions, when  affirmed  or  reversed  by  the  Commissioner, 
became  the  action  of  the  office.  It  was  to  make  perma- 
nent provision  for  this  board  that  the  act  of  1861  was 
passed. 

That  act  provides:  "That  for  the  purpose  of  securing 
greater  uniformity  of  action  in  the  grant  and  refusal  of 
letters  patent,  there  shall  be  appointed  by  the  President, 
by  and  with  the  advice  and  consent  of  the  Senate,  three 
examiuers-in-chief,  at  an  annual  salary  of  $3,000  each,  to 
be  composed  of  persons  of  competent  legal  knowledge 
and  scientific  ability,  whose  duty  it  shall  be,  on  the  writ- 
ten petition  of  the  applicant  for  that  purpose  being  filed, 
to  revise  and  determine  upon  the  validity  of  decisions 
made  by  examiners  when  adverse  to  the  grant  of  letters 
patent;  and  also  to  revise  and  determine  in  like  manner 
upon  the  validity  of  the  decisions  of  examiners  in  inter- 
ference cases  and  when  required  by  the  Commissioner 
in  applications  for  the  extension  of  patents,  and  to  per- 
form such  other  duties  as  may  be  assigned  to  them  by 
the  Commissioner;  that  from  their  decisions  appeals  may 
be  taken  to  the  Commissioner  of  Patents  in  person,  upon 
payment  of  the  fee  hereinafter  prescribed;  that  the  said 
examiners-in-chief  shall  be  governed  in  their  action  by 


APPEAL  TO  EXAMINERS-IN-CHIEF.  351 

the  rules  to  be  prescribed  by  the  Commissioner  of  Pat- 
ents." 

Except  as  to  the  manner  of  their  appointment,  this  is 
substantially  the  old  appeal  board.  These  new  officers 
are  made,  by  express  provision  of  law,  subordinate  to 
the  Commissioner;  are  required  "to  perform  such  other 
duties  as  may  be  assigned  to  them"  by  him,  and  are  re- 
quired to  be  governed  in  "their  action,"  upon  all  the 
subjects  committed  to  them,  both  by  the  law  and  the 
Commissioner,  "by  the  rules  to  be  prescribed"  by  him. 
(Hull  ex  parte,  Commissioners'  Decisions,  1869,  p.  68.) 

212.  EXAMINERS-IN-CHIEF  TO  BE  GOVERNED  BY  THE 
RULES  AND  DECISIONS  OF  THE  COMMISSIONER. — It  follows, 
therefore,  that  the  board  of  examiners,  like  all  other 
examiners,  are  controlled  in  their  action  by  the  rules 
of  the  office,  or  any  rules  of  practice  announced  by  the 
Commissioner,  or  any  construction  of  such  rules  or 
of  the  law,  made  by  him,  as  may  be  of  general  applica- 
tion. 

Indeed,  in  no  other  way  can  "uniformity  of  action" 
be  secured.  If  the  board  are  to  affirm  to-day  and  reverse 
to-morrow  under  the  same  state  of  facts — if  they  are  to 
follow  the  Commissioner  in  this  decision,  and  to  differ 
from  him  in  that — it  is  manifest  that,  so  far  from  securing 
uniformity,  they  would  soon  plunge  the  office  into  inex- 
tricable confusion.  Their  true  office  is,  while  relieving 
the  Commissioner  of  the  mass  of  appeals  which  come 
from  the  primary  examiners,  so  to  deal  with  those  ap- 
peals as  to  enforce  upon  the  examiners  his  decisions  and 
his  administration  of  the  office,  and  thus  secure  uni- 
formity. They  are  not  to  make  law  for  the  Commis- 
sioner; but,  both  by  the  appeal  allowed  to  him  from 


352  PROCEDURE  IN  THE  PATENT  OFFICE. 

them,  and  by  the  express  provisions  of  the  act,  he  is  to 
make  law  for  them. 

It  will  be  noticed  that  appeals  may  be  taken  from  the 
primary  examiner  to  the  board  of  examiners-in-chief 
from  decisions  "  when  adverse  to  the  grant  of  letters  pat- 
ent." No  such  provision  is  made  as  to  appeals  to  the 
Commissioner  from  the  board.  Such  appeal  is  "from 
their  decisions."  In  both  instances  the  law  is  silent  as 
to  decisions  either  by  the  primary  examiners  or  the  ex- 
aminers-in-chief, when  such  decisions  are  not  adverse  to 
the  grant  of  letters  patent. 

Such  decisions  undoubtedly  remain  unaffected  by  the 
act  of  1861.  They  remain,  as  they  always  were,  under 
the  control  of  the  Commissioner,  as  the  executive  head 
of  the  office.  He  prescribes  the  duties  of  the  examiners. 
He  is  himself  an  examiner,  under  the  act  of  1836,  and 
by  the  terms  of  that  act  it  is  made  his  duty  to  "  superin- 
tend, execute,  and  perform  all  such  acts  and  things  touch- 
ing and  respecting  the  granting  and  issuing  of  patents 
for  new  and  useful  discoveries,  &c.,  as  are  herein  pro- 
vided for,  or  shall  hereafter  by  law  be  directed  to  be  done 
and  performed."  He  countersigns  the  patent,  and  after 
the  indorsement  of  the  examiner  upon  it  touching  his 
examination,  the  Commissioner,  or  his  agent,  must  au- 
thorize its  issue,  and  cause  the  seal  of  the  office  to  be 
affixed  to  it.  (Ib.) 

213.  WHEN  APPLICANT  MAY  APPEAL. — Every  applicant 
for  a  patent  or  the  reissue  of  a  patent,  any  of  the  claims 
of  which  have  been  twice  rejected,  and  eveiy  party  to  an 
interference,  may  appeal  from  the  decision  of  the  primary 
examiner,  or  of  the  examiner  in  charge  of  interference, 
in  such  case,  to  the  board  of  examiners-in-chief,  having 


APPEAL  TO  EXAMINERS-IN-CHIEF.  353 

once  paid  the  fee  for  such  appeal  provided  by  law.  (Act 
of  July  8,  1870,  §  46.)  But  there  must  be  two  rejections 
upon  the  claim  as  originally  filed,  or,  if  amended,  (in  a 
matter  of  substance,)  upon  the  amended  claim.  (Patent 
Office  Rules,  July,  1870.) 

214.  FROM  THE  JUDICIAL  ACTS  OF  THE  EXAMINER  AN 
APPEAL  LIES  TO  THE  BOARD;  FROM  HIS  EXECUTIVE  ACTS 
THE  APPEAL  is  TO  THE  COMMISSIONER. — The  examiners 
and  the  Commissioner  act  continually  in  a  double  capac- 
ity. They  are  executive  officers,  having  certain  duties 
to  perform,  in  relation  to  every  application,  of  a  purely 
executive  character.  Some  of  these  duties  are  purely 
ministerial,  and  others,  while  strictly  executive,  require 
the  exercise  of  discretion.  Thus,  the  reception  of  the 
application  and  of  the  fee,  the  act  of  examination,  the 
record  of  the  patent,  and  the  signing  and  the  sealing,  are 
ministerial;  while  the  determination  of  the  question  of 
title,  the  number  of  amendments,  the  structure  of  the 
specification,  the  correspondence  of  the  drawings  with 
the  model  or  the  written  description,  and  the  accuracy 
or  completeness  of  the  description,  are  executive  acts, 
although  discretion  is  exercised  in  their  performance. 
The  judgments  of  the  examiner,  or  of  the  Commissioner, 
upon  what  may  be  called  the  merits;  the  questions  of  pat- 
entability, of  novelty,  and  utility,  are  judicial  acts;  and 
it  is  when  sitting  to  determine  these  and  questions  of  like 
character  that  these  officers  become  quasi  judges.  The 
board  of  examiners-in-chief,  on  the  other  hand,  act  only 
in  an  appellate  and  judicial  capacity.  They  are  not  by 
law  vested  with  any  executive  duties,  except  as  they  may 
be  included  in  "  such  other  duties  as  may  be  assigned  to 
them  by  the  Commissioner." 

3A* 


354  PROCEDURE  IN  THE  PATENT  OFFICE. 

From  the  judicial  acts  of  the  examiner  an  appeal  lies 
to  the  board ;  from  his  executive  acts  the  appeal  is  to  the 
Commissioner.  An  appeal  from  his  decision  upon  the 
merits  does  not  carry  with  it  his  action  upon  executive 
matters.  (Krake  ex  parte,  Commissioners'  Decisions,  1869, 
p.  100.) 

Decisions  of  examiners  upon  preliminary  or  interme- 
diate questions,  or  refusals  to  act,  twice  repeated,  will  be 
re-examined,  upon  application,  by  the  Commissioner  in 
person.  (Patent  Office  Hides,  July,  1870.) 

In  the  case  of  Wilkinson  ex  parte  the  Commissioner 


"  This  application  was  rej  ected  by  the  examiner  because, 
in  his  opinion,  the  device  was  '  essentially  deficient  in  pat- 
entable  invention.'  Thereupon  the  applicant  demanded 
a  reference  or  a  patent.  The  examiner  gave  no  reference 
and  refused  a  patent.  Applicant  reiterates  his  demand 
for  a  reference  under  rule  37,  and  appeals  to  the  Commis- 
sioner in  person  under  rule  45. 

"He  has  mistaken  both  his  rights  and  his  remedy. 

"Rule  37  provides,  that '  upon  the  rejection  of  an  appli- 
cation for  want  of  novelty,  the  applicant  will  be  furnished 
with  a  specific  reference,'  &c.  The  present  application  is 
not  rejected  'for  want  of  novelty,'  but  for  want  of  'pat- 
entable  invention.'  This  objection  may  concede  that  the 
thing  is  new,  but  denies  that  invention  w^s  involved  in  its 
production.  No  reference  is  required  either  by  rule  or 
by  law  to  establish  this  ground  of  rejection. 

"  But,  if  it  were  so,  the  remedy  is  by  appeal  to  the  board 
of  examiners-in-chief,  and  not  to  the  Commissioner  in  per- 
son. This  is  not  a  decision  upon  an  intermediate  ques- 
tion, nor  is  it  a  refusal  to  act.  The  examiner's  decision 


APPEAL  TO  EXAMINERS-IN-CHIEF.  355 

goes  to  the  merits  of  the  application  and  is  adverse  to  the 
applicant.  If  the  examiner  gives  a  general  reference,  and 
the  applicant  is  entitled  to  a  specific  reference,  and  de- 
mands it,  the  remedy  is  by  appeal  to  the  board,  who  would 
then  hold  the  general  reference  to  be  no  reference,  or  an 
insufficient  one,  and  reverse  the  decision  of  the  examiner 
in  rejecting  the  application.  The  case  does  not  differ  in 
principle  from  one  in  which  a  specific  reference  is  given, 
which  the  applicant  claims  to  be  insufficient  to  form  the 
basis  of  a  judgment  of  rejection. 

"The  appeal  is  dismissed."  (Commissioners'  Decisions, 
March,  1870.) 

215.  ADVERSE  DECISIONS  ONLY  REVISED. — The  exam- 
iners-in-chief  will  consider  the  case  as  it  was  when  last 
passed  upon  by  the  primary  examiner,  merely  revising 
his  decisions  so  far  as  they  were  adverse  to  the  applicant. 
(Patent  Office  Rules,  July,  1870.) 

In  the  case  of  Rockwell  ex  parte  (motion)  the  Commis- 
sioner says : 

"In  this  case,  which  has  been  rejected  by  the  board  of 
examiners-in-chief,  on  appeal  from  the  primary  exam- 
iner, the  applicant  asks  that  the  case  may  be  remanded 
to  the  board,  with  instructions  to  reconsider  their  action. 

"The  grounds  upon  which  this  motion  is  based,  as 
stated  by  the  attorneys  for  applicant,  are,  1.  '  That  the 
action  was  not  made  according  to  law;  and,  2.  That  an 
entire  misapprehension  existed  in  respect  to  the  two  ar- 
ticles. The  examiner  gave  a  reference  which  he  consid- 
ered to  be  an  equivalent  for  our  client's  invention,  thereby 
affirming  its  patentability,  but  denying  its  novelty.  The 
board,  on  the  other  hand,  refuse  the  patent  on  the  ground 
that  the  improvement  lacked  "  inventive  genius,"  thereby 


356  PROCEDURE  IN  THE  PATENT  OFFICE. 

denying  its  patentability,  which  was  not  in  controversy. 
It  by  this  means  reversed  the  affirmative,  and  not  the 
adverse  decision  of  the  primary  examiner,  while  it  thus, 
of  course,  contravened  the  law  entirely.  (See  case  Ste- 
phen Hull,  Commissioners'  Decisions,  1869,  p.  69.)  Again, 
there  is  evidently  a  total  misunderstanding  with  regard 
to  the  correspondencies  which  exist  between  the  two 
devices.' 

"The  applicant  mistakes  the  meaning  of  the  words 
•*  adverse  decision,'  as  applied  to  the  action  of  the  primary 
examiner.  He  seems  to  suppose  that  these  words  are 
equivalent  to  '  reason  for  adverse  decision '  or  '  adverse 
reason'  of  the  examiner;  whereas,  in  truth,  they  refer  to 
the  conclusion  or  action  of  the  examiner,  and  not  the 
reason  which  he  gives  for  it.  The  decision  of  the  exam- 
iner is,  that  one  or  all  of  the  claims  of  the  application  are 
rejected.  This  is  adverse  to  the  applicant,  as  it  denies 
his  right  to  a  patent.  He  appeals  from  the  fact  of  rejec- 
tion, not  from  the  theory  upon  which  it  is  based.  That 
may  be  wrong,  but  the  action  itself  may  be  right,  and 
the  board,  seeing  that  what  the  examiner  has  done  or 
decided  is  right,  must  necessarily  affirm  his  decision, 
although  they  may  be  of  the  opinion  that  he  could  have 
given  a  much  better  reason  for  it. 

"  The  appeal  in  this  respect  is  analogous  to  the  ordi- 
nary appeals  in  equity  cases.  Nothing  is  more  common 
than  for  the  court  above  to  affirm  the  judgment  of  the 
court  below,  upon  grounds  quite  different  from  those 
taken  by  the  tribunal  of  original  jurisdiction;  sometimes, 
indeed,  the  appellate  tribunal  expressly  repudiates  the 
reasons  for  the  decision  rendered  below,  and  yet  affirms 
the  decision  or  judgment  itself. 


APPEAL  TO  EXAMINERS-IN-CHIEF.  357 

"If,  therefore,  an  appeal  be  taken  to  the  board,  it  IB 
from  the  decision,  action,  judgment,  or  order  of  the  ex- 
aminer, and  not  from  his  reasoning.  The  board  will 
look  into  the  case  to  see  if  upon  the  record  the  decision 
or  action  be  right,  although  the  reason  assigned  for  it  be 
utterly  untenable.  If,  as  in  the  present  case,  the  applica- 
tion be  rejected  ibr  want  of  novelty,  and  the  examiners- 
in-chief  find  that  the  alleged  invention  does  not  involve 
a  patentable  subject-matter,  they  may  properly  affirm  the 
decision  of  the  primary  examiner,  which  decision  was, 
that  a  patent  could  not  be  granted. 

"This  rule,  however,  applies  only  to  questions  pre- 
sented by  the  record  which  are  appealable  to  the  board, 
by  which  I  refer  to  questions  arising  upon  the  merits  of 
the  application.  The  examiners-in-chief  are  not  to  make 
examinations  for  the  purpose  of  procuring  new  testi- 
mony upon  which  to  found  new  reasons,  nor  are  they  to 
reverse  or  affirm  the  decision  of  the  primary  examiner 
upon  matters  of  executive  detail.  If,  for  example,  the 
claims  be  rejected  for  want  of  novelty,  and  the  board  dis- 
cover upon  examination  that  no  oath  has  been  made,  or 
that  the  specification  is  not  witnessed,  they  are  not  to 
affirm  the  decision  rejecting  the  application,  especially 
if  they  find  the  merits  of  the  case  with  applicant.  The 
proper  course,  in  such  case,  is  to  refer  the  case  to  the  ex- 
aminer, suggesting  the  informality,  in  order  that  it  may 
be  corrected  before  any  decision  is  made  upon  the  merits. 

"As  to  the  second  ground  upon  which  a  reconsidera- 
tion is  asked,  to  wit,  that  the  examiners-in-chief  misap- 
prehended the  character  of  the  application,  or  of  the 
reference;  that  can  only  be  reached  by  appeal  to  the 
Commissioner.  That  mode  of  review  is  expressly  pro- 


358  PKOCEDURE  IN  THE  PATENT  OFFICE. 

vided  for  the  correction  of  any  errors,  either  as  to  the 
law  or  facts,  which  the  examiners-in-chief  may  make. 
In  order  to  pass  upon  this  branch  of  the  motion,  I  must 
examine  the  case  upon  its  merits.  This  I  can  only  do 
upon  an  appeal  regularly  initiated  by  the  payment  of  the 
fee  prescribed  by  law. 

"  The  motion  is  therefore  overruled."  (Commissioners' 
Decisions,  September  21, 1870.) 

216.  No  REHEARING  ALLOWED  EXCEPT  UPON  ORDER  OF 
COMMISSIONER. — Cases  which  have  been  heard  and  de- 
cided by  the  examiners-in-chief  will  not  be  reheard  by 
them  except  upon  the  order  of  the  Commissioner.  (Pat- 
ent Office  Ruks,  July,  1870.) 

In  the  case  of  Strain  ex  parte,  (rnotion,)  Acting  Com- 
missioner Duncan  says:  " This  application  was  rejected 
a  second  time  by  the  primary  examiner  February  25, 
1870,  and  upon  appeal  duly  taken  his  decision  was  af- 
firmed by  the  board  of  examiners-iu-chief  March  30. 

"  Since  this  decision  by  the  board  the  g#se  seems  to 
have  been  reconsidered  by  both  the  primary  examiner 
and  the  examiners-in-chief,  numerous  affidavits  having 
been  filed  by  applicant  bearing  upon  the  alleged  novelty 
and  utility  of  the  invention.  In  these  subsequent  pro- 
ceedings the  examiner  adheres  to  his  former  position, 
reiterating  the  references  before  cited,  which  in  his  judg- 
ment should  defeat  the  application  on  the  score  of  nov- 
elty; while  the  board  in  their  second  decision,  rendered 
July  20,  overrule  the  adverse  decision  of  the  examiner, 
basing  their  judgment  upon  'the  affidavits  filed  since  the 
case  was  last  before  them.' 

"  All  the  proceedings  in  this  case  since  the  first  decis- 
ion rendered  by  the  board  have  been  irregular  and  with- 


APPEAL  TO  EXAMINERS-IN-CHIEF.  359 

out  authority.  While  it  was  competent  for  the  applicant 
to  support  his  argument  by  affidavits,  there  was  no  au- 
thority for  the  examiner  to  reopen  the  case  for  further 
action,  and  the  subsequent  action  of  the  board  is  in  con- 
travention of  the  rule  that  '  cases  which  have  been  heard 
and  decided  by  the  examiners-in-chief  will  not  be  reheard 
by  them,  except  upon  the  order  of  the  Commissioner.' 

"The  later  proceedings  in  this  case,  therefore,  are  set 
aside,  and  the  application  remanded  to  the  status  which 
it  properly  held  immediately  upon  the  first  rejection  by 
the  board."  ( Commissioners'  Decisions,  July  27, 1870.) 

217.  AFTER  THE  DECISION  OF  THE  BOARD,  A  PRIMARY 
EXAMINER  CANNOT  RECONSIDER  THE  CASE  WITHOUT  AN 
ORDER  FROM  THE  COMMISSIONER. — In  the  case  of  Duthie 
v.  Casilear  (interference)  the  Commissioner  says:  "This 
is  a  motion  to  dissolve  an  interference.  Several  reasons 
are  urged  by  the  attorney  for  the  motion,  of  which  only 
one  will  be  considered. 

"It  appears  that  Duthie's  patent  was  twice  rejected  by 
the  examiner  and  once  by  the  examiners-iu-chief.  Sub- 
sequently, through  oversight  or  change  of  opinion,  the 
examiner  allowed  a  patent  to  Casilear.  He  afterward 
took  up  the  application  of  Duthie,  and,  without  amend- 
ment or  order  from  the  Commissioner,  reconsidered  it, 
and  placed  it  in  interference  with  the  patent  of  Casilear. 
This  course  was  irregular.  After  the  decision  of  the 
board  the  case  was  removed  from  the  jurisdiction  of  the 
examiner,  and  he  could  not  reconsider  the  case  without 
an  order  from  the  Commissioner.  It  is  somewhat  diffi- 
cult to  see,  also,  if  the  inventions  interfere,  how  a  patent 
was  granted  to  Casilear,  a  subsequent  applicant.  At  all 
events,  the  irregularity  in  the  reconsideration  of  Duthie's 


860  PROCEDURE  IN  THE  PATENT  OFFICE. 

case  and  in  the  declaration  of  interference  are  such,  tljat 
the  motion  to  dissolve  the  interference  must  prevail. 
The  interference  is  dissolved."  ( Commissioners'  Decisions, 
September  15, 1870.) 

218.  CASE  MAY  BE  REMANDED  FOR  FURTHER  EXAMINA- 
TION.— When  the  applicant  has  appealed,  the  case  is 
closed  before  the  primary  examiner,  unless  it  be  regu- 
larly remanded,  with  leave  to  amend  or  with  directions 
for  further  examination.  If  it  be  so  remanded,  the  case 
is  reopened  below,  and  cannot  return  to  the  appellate 
tribunal  until  the  applicant  has  responded  to  the  new 
examination,  either  by  amendment  or  fresh  appeal. 
In  the  case  of  Krake  ex  parte  the  Commissioner  says: 
"  These  statements  were  interpolations  of  the  most  dan- 
gerous character.  The  examiner  excuses  himself  for  per- 
mitting them  to  remain  in  the  specification,  by  stating 
that  the  board  of  examiners-in-chief  did  not  order  them 
to  be  stricken  out.  But  this  is  no  excuse.  It  was  not 
the  duty  of  the  board  to  strike  them  out.  It  is  the  duty 
of  the  examiner  to  purge  the  specification,  drawings,  or 
model  of  new  matter  before  examining  the  claims.  His 
action  upon  such  questions  is  not  'adverse'  to  the  grant 
of  letters  patent,  because  it  is  not  a  final  adjudication  upon 
the  merits.  No  appeal,  therefore,  lies  from  such  action 
to  the  board  of  examiners-in-chief."  (See  Decision  of 
Commissioner  Holloway,  William  Cleveland  Hicks  ex  parte,  9 
Decisions,  p.  323.)  *  *  *  "  It  was  the  duty  of  the  ex- 
aminer, therefore,  at  any  stage  of  the  case,  to  purge  this 
application  of  the  new  matter  interpolated  into  the  amend- 
ed specification.  It  was  not  the  duty  of  the  examiners- 
in-chief  to  do  this,  although  it  is  undoubtedly  within  their 
power,  at  their  discretion,  to  decline  to  entertain  an  ap- 


APPEAL  TO  EXAMINERS-IN-CHIEF.  361 

peal  while  the  application  is  imperfect,  and  to  remand  it 
to  the  examiner,  that  such  imperfections  might  be  cured." 
(Commissioners'  Decisions,  1869,  p.  100.) 

219.  DELEGATED  DISCRETION  EXERCISED  BY  A  PRIMARY 
EXAMINER  CANNOT  BE  REVIEWED. — In  the  case  of  Mody 
and  Hudson  ex  parte  the  Commissioner  says : 

"The  examiner  rejected  the  claims  of  appellant  upon 
references.  I  agree  with  the  board  of  examiners-in-chief, 
that  the  references  are  not  pertinent,  and  that  the  combi- 
nations claimed  are  novel. 

"The  board,  however,  go  on  to  say:  'But  the  emerg- 
ency does  not  warrant  the  expense  incurred  and  the  in- 
conveniences resulting  from  its  being  embodied  in  the 
instrument.  Even  when  the  tool  requires  such  a  correc- 
tion as  is  supposed,  which  will  very  rarely  occur,  it  would 
be  cheaper  to  make  a  new  face  upon  the  indicator  than 
to  resort  to  the  applicant's  apparatus.  This  is  clearly  one 
of  those  cases  in  which^it  is  left  to  the  discretion  of  the 
Commissioner  to  determine  whether  an  invention  is  suffi- 
ciently useful  and  important  '  to  justify  the  issue  of  a  pat- 
ent.' (See  §  7,  Act  July  4, 1836.) 

"  The  examiner  made  no  objection  to  the  application 
because  of  lack  of  utility  in  the  invention,  but  the  board, 
while  overruling  him  upon  the  issue  of  novelty,  affirms 
his  rejection  of  the  patent  upon  the  ground  set  up  by 
themselves  as  above. 

"  This  involved  a  two-fold  error:  First,  If  the  question 
of  utility  be  one  of  discretion  vested  in  the  Commissioner 
in  person,  the  board  of  examiners-iu-chief  cannot  exer- 
cise discretion  for  him;  but  if  it  be  delegated  discretion, 
to  be  exercised  by  the  primary  examiner  as  the  agent  of 
the  Commissioner,  then  the  exercise  of  it  cannot  be  re- 
31 


862  PROCEDURE  IN  THE  PATENT  OFFICE. 

viewed  upon  appeal.  It  is  familiar  law,  that  no  appeal 
or  writ  of  error  will  lie  to  set  aside  an  act  or  reverse  a 
decision,  the  making  of  which  the  law  has  confided  to 
the  discretion  of  the  lower  court.  Second,  The  objection 
to  the  application,  that  the  invention,  though  new  and 
useful,  is  costly,  and  likely  to  be  more  costly  than  useful, 
is  not  one  which  the  Patent  Office  should  raise  or  main- 
tain. It  may  well  he  left  to  the  puhlic,  who  buy  the  best 
and  cheapest.  This  subject  was  fully  discussed  in  Cheese- 
borough  ex  parte,  (Commissioners'  Decisions,  May  1869,  p. 
11,)  and  the  reasoning  of  that  decision  covers  the  present 
case. 

"  The  decision  of  the  board  of  examiners-in-chief  is 
reversed."  (Commissioners'  Decisions,  1869,  p.  108.) 

220.  THE  COMMISSIONER  MAY  WITHHOLD  A  PATENT,  AL- 
THOUGH THE  EXAMINERS-IN-CHIEF  HAVE  DECIDED  THAT  IT 

OUGHT  TO  ISSUE. — In  the  case  of  Stephen  Hull  ex  parte  the 
Commissioner  says : 

"The  examiner  refused  to  grant  a  patent  upon  the 
ground  that  the  application  had  been  abandoned  and  the 
invention  had  gone  into  public  use. 

"Applicant  appealed  to  the  board  of  examiners-in- 
chief  June  1,  1869,  and  on  August  28,  1869,  the  board, 
by  two  of  its  members,  rendered  a  decision  reversing 
that  of  the  primary  examiner. 

"  On  June  9,  1869,  two  months  and  a  half  before  the 
decision  of  the  board  was  made,  the  Commissioner  de- 
cided, in  the  case  of  John  W.  Cochran,  involving  facts 
almost  identical  with  those  in  applicant's  case,  that  a 
patent  ought  not  to  issue.  This  decision  affirmed  a  pre- 
vious decision  of  the  board  of  examiners-in-chief. 

"  It  does  not  appear,  from  the  decision  of  the  board  in 


APPEAL  TO  EXAMINERS-IN-CHIEF.  363 

the  present  case,  that  the  opinion  of  the  Commissioner 
in  Cochran's  case  was  considered  or  was  before  them; 
but  it  does  appear  that,  whether  with  or  without  exam- 
ining that  decision,  they  have  in  effect  decided  that  a 
patent  ought  to  issue  in  a  class  of  cases  in  which  the 
Commissioner  and  themselves  had  already  decided  that 
it  ought  not  to  issue. 

"  If  the  decision,  while  departing  from  the  rule  laid 
down  by  the  Commissioner,  had  been  adverse  to  appli- 
cant, he  would,  no  doubt,  have  sought  the  Commissioner 
by  appeal,  to  demand  that  the  action  of  the  board,  in 
neglecting  to  conform  to  that  of  the  Commissioner,  be 
reversed.  As,  however,  the  decision  is  in  his  favor,  he 
demands  his  patent,  and  insists  that  the  board  of  exam- 
iners-in-chief '  are  to  settle  for  the  examiners  what  is  the 
law  in  patent  cases,'  even  to  the  extent  of  ignoring  the 
decisions  of  the  Commissioner.  *  *  *  As  the  head 
of  the  office,  responsible  for  its  management  and  for  the 
acts  of  his  subordinates,  charged  by  law  with  the  execu- 
tion of  all  acts  and  things  touching  the  granting  and  issu- 
ing of  letters  patent,  it  is  his  right,  it  is  his  duty,  when 
he  has  reason  to  believe  that,  by  the  action  of  any  of  his 
subordinates,  a  patent  is  about  to  issue  which  ought  not 
to  be  granted,  to  arrest  such  issue,  and  to  take  such  steps 
as  in  his  judgment  may  be  necessary  to  correct  the  error 
and  secure  the  public  from  imposition.  To  say  that  any 
examiner,  or  board  of  examiners,  refusing  to  be  guided 
by  his  decisions  or  to  obey  his  rules,  might  issue  patents 
broadcast  to  those  who  were  not  entitled  to  them,  and 
that,  because  there  is  no  appeal  as  against  the  lucky  ap- 
plicant, the  Commissioner  is  by  law  made  powerless  to 
avert  the  evil — nay,  more,  must  himself  sign  the  patents 


364  PROCEDURE  IN  THE  PATENT  OFFICE. 

which  he  knows  ought  not  to  issue — is  to  force  upon  this 
act  a  construction  which  is,  in  my  opinion,  the  very  re- 
verse of  that  intended  by  the  legislature. 

"I  have  examined  the  remarks  of  Judge  Dunlop  in 
Snowden  v.  Pierce.  Although  expressing  some  views  ad- 
verse to  the  opinion  I  have  here  maintained,  this  point 
was  not,  as  it  could  not  be,  before  him.  What  he  says 
is  simply  obiter  dictum,  provoked  apparently  by  the  argu- 
ment of  counsel.  The  question,  if  there  be  one,  is  of  an 
executive  rather  than  a  judicial  character,  and  is  for  the 
Attorney  General  rather  than  for  the  courts. 

"In  the  absence  of  other  light  upon  this  subject  than 
that  afforded  me  by  the  statute  and  the  practice  of  the 
office,  I  have  no  hesitation  in  holding,  that  I  have  the 
power  .to  withhold  a  patent  at  any  stage  of  its  progress, 
whenever  facts  arise  which  in  my  judgment  constitute 
a  bar  to  its  issue.  This  is  the  view  taken  by  Commis- 
sioner Foote,  my  immediate  predecessor.  In  his  annual 
report  for  1868  he  says :  '  I  have  endeavored  to  provide 
some  means  for  reviewing,  briefly,  favorable  decisions 
before  patents  were  issued  upon  them,  but  found  that 
the  force  of  the  office  was  inadequate  to  such  work  in 
addition  to  the  performance  of  other  indispensable  du- 
ties.' 

.  "In  this  case  I  have  suspended  the  issue  of  a  patent 
to  Stephen  Hull,  and  have  remanded  the  case  to  the 
board  of  examiuers-in-chief  for  re-examination,  in  the 
light  of  the  decision  of  the  Commissioner  in  the  cases  of 
John  W.  Cochran  and  John  W.  Orr."  (Commissioners'  De- 
cisions, 1869,  p.  68.) 

221.  PETITION  TO  SET  FORTH  REASONS  OF  APPEAL. — A 
petition  in  writing  must  be  filed,  signed  by  the  party  or 


APPEAL  TO  THE  COMMISSIONER  IN  PERSON.  365 

his  authorized  agent  or  attorney,  praying  an  appeal  and 
setting  forth  briefly  and  distinctly  the  reasons  upon 
which  the  appeal  is  taken.  (Patent  Office  Rules,  July, 
1870.) 

222.  FORM  OF  APPEAL  FROM  THE  EXAMINER  TO  THE  EX- 
AMINERS-IN-CHIEF.— 

To  the  Commissioner  of  Patents. 

SIR:  I  hereby  appeal  to  the  examiners-in-chief  from  the  decision  of  the 
principal  examiner,  in  the  matter  of  my  application  for  letters  patent  for 
an  improvement  in  wagon  brakes,  which,  on  the  20th  day  of  July,  1869, 
was  rejected  the  second  time.  The  following  are  assigned  for  reasons  of 
appeal:  [Here follow  reasons.]  LEMUEL  LOOKUP. 

223.  FORM  OF  APPEAL  FROM  THE  EXAMINER  IN  CHARGE 
OF  INTERFERENCES  TO  THE  EXAMINERS-IN-CHIEF. — 

To  the  Commissioner  of  Patents. 

SIB  :  I  hereby  appeal  to  the  examiners-in-chief  from  the  decision  of  the 
principal  examiner  in  charge,  in  the  matter  of  the  interference  between 
my  application  for  letters  patent  for  improvement  in  sewing  machines 
and  the  letters  patent  of  Elias  Coleman,  in  which  priority  of  invention 
was  awarded  to  said  Coleman.  The  following  are  assigned  for  reasons 
for  appeal:  [Here follow  reasons.]  WILLIAM  SYPHAX. 


XIII.  Appeal  to  the  Commissioner  in  Person. 


SEC. 

224.  Appeal  from  examiners-in-chief. 

225.  Commissioner  will  not  review 

the  action  of  his  predecessor. 

226.  Time  of  hearing. 

227.  Motions. 

228.  Limit  of  oral  arguments. 

229.  New  assignment. 


SEC. 

230y  Decisions    upon    questions  of 

fact. 
231.  Case  may  be  remanded  to  ex- 


aminer. 


232.  Appeal  from  primary  exam- 


iner. 


233.  Form  of  appeal. 


224.  APPEAL  FROM  THE  EXAMINERS-IN-CHIEF. — If  the 
applicant  is  dissatisfied  with  the  decisions  of  the  exam- 
iners-in-chief he  may,  on  payment  of  the  duty  required 
31* 


366  PROCEDURE  IN  THE  PATENT  OFFICE. 

by  law,  appeal  to  the  Commissioner  in  person.  (Act  of 
July  8, 1870,  §  46.)  All  cases  which  have  been  acted  on 
by  the  board  of  examiners-in-chief  may  be  brought  be- 
fore the  Commissioner  in  person,  upon  a  written  request 
to  that  effect,  and  upon  the  payment  of  the  fee  of  twenty 
dollars  required  by  law.  (Patent  Office  Rules,  July,  1870.) 

225.  A  CASE  DELIBERATELY  DECIDED  BY  ONE  COMMIS- 
SIONER WILL   NOT  BE  DISTURBED  BY  HIS  SUCCESSOR. — The 

only  remaining  remedy  will  be  by  appeal,  in  those  cases 
allowed  by  law,  to  the  supreme  court  of  the  District  of 
Columbia  sitting  in  bane.  (Ib.)  The  Commissioner  will 
not  review  the  action  of  his  predecessor,  or  of  the  appel- 
late judge  in  the  same  case.  (J.  W.  Orr  ex  parte,  Commis- 
sioners' Decisions,  1869,  p.  33.) 

226.  TIME  OF  HEARING. — All  cases  pending  before  the 
Commissioner  will  stand  for  argument  at  one  o'clock  on 
the  day  of  hearing.     If  either  party  in  a  contested  case, 
or  the  appellant  in  an  ex  parte  case,  appear  at  that  time, 
he  will  be  heard.     (Patent  Office  Pules,  July,  1870.) 

227.  MOTIONS. — Reasonable  notice  of  all  motions,  and 
copies  of  the  motion  papers  and  affidavits,  must  be  served 
upon  the  opposite  party  or  his  attorney ;  and  in  con- 
tested cases  no  motions  will  be  heard  in  the  absence  of 
the  other  party,  except  upon  default  after  due  notice; 
nor  will  a  case  be  taken  up  for  oral  argument  after  the 
day  of  hearing,  except  by  consent  of  both  parties.    (Ib.} 

228.  LIMITATION  OF  ORAL  ARGUMENTS. — Unless  other- 
wise ordered  before  the  hearing  begins,  oral  arguments 
will  be  limited  to  one  hour  for  each  counsel.     (Ib.} 

229.  NEW  ASSIGNMENT. — If  the  engagements  of  the 
tribunal  before  whom  the  case  is  pending  are  such  as  to 
prevent  it  from  being  taken  up  on  the  day  of  hearing,  a 


APPEAL  TO  THE  COMMISSIONER  IN  PERSON.  367 

new  assignment  will  be  made,  or  the  case  will  be  con- 
tinued from  day  to  day  until  heard.  (76.) 

230.  DECISIONS  TURNING  UPON  QUESTIONS  OF  FACT  WILL 
NOT  BE  REVERSED  UNLESS  RENDERED  WITHOUT  OR  AGAINST 
EVIDENCE. — The  appeal  to  the  board  of  examiners,  and 
to  the  Commissioner  and  judge,  was  given  to  deter- 
mine disputed  points  of  law,  rather  than  to  review  mere 
questions  of  fact.  Upon  such  questions  the  examiner  is 
as  likely  to  be  right  as  the  Commissioner.  It  is  familiar 
law,  that  the  verdict  of  a  jury,  or  the  finding  of  a  judge 
upon  submission,  upon  facts,  will  not  be  disturbed  by 
the  appellate  tribunal,  except  in  cases  where  the  verdict 
or  judgment  is  manifestly  without  evidence,  or  beyond  a 
reasonable  doubt  against  evidence.  The  mere  fact  that 
the  appellate  judge  feels  that  if  the  question  had  been 
originally  tried  before  him  he  would  have  come  to  a 
different  conclusion  from  the  lower  tribunal,  (no  ques- 
tion of  law  being  involved,)  will  not  justify  him  in  dis- 
turbing the  judgment  of  that  tribunal,  where  there  was 
any  evidence  to  sustain  it.  (Fawcett  v.  Graham,  Commis- 
sioners' Decisions,  1869,  p.  113.) 

In  the  case  of  Blanchard  v.  Strain,  the  Commissioner 
says: 

"  The  testimony  is  very  voluminous,  covering  some 
three  hundred  and  seventy-five  pages  of  manuscript. 
The  examiner  in  charge  of  interferences  and  the  exam- 
iners-in-chief  have  both  decided  in  favor  of  Strain.  The 
question  involved  is  purely  one  of  fact,  depending  upon 
the  credibility  of  contradicting  witnesses. 

"  I  cannot  believe  it  was  ever  intended  that  in  a  case 
like  this,  where  no  legal  question  is  involved,  the  parties 
should  be  able,  by  appeal,  to  compel  four  tribunals  to 


368  PROCEDURE  IN  THE  PATENT  OFFICE. 

read  over  a  great  mass  of  testimony,  with  a  view  of  pro- 
nouncing independent  judgments  upon  the  evidence, 
without  reference  to  the  opinions  of  those  who  had 
already  considered  it.  If  the  fact  that  the  examiner  and 
examiuers-in-chief  have  both  found  the  weight  of  evi- 
dence with  Strain  is  to  have  no  weight  with  me — if  I  am 
to  throw  it  aside  and  examine  the  case  as  if  they  had 
never  looked  at  it — it  is  obvious  that  the  two  trials  before 
them  might  as  well  have  been  dispensed  with,  and  that 
all  such  cases  might  as  well  be  tried  before  the  Commis- 
sioner or  appellate  judge  in  the  first  instance. 

"  The  duty  of  the  Commissioner  in  this  class  of  cases 
is,  in  my  opinion,  fully  discharged  when  he  has  so  far 
examined  the  case  as  to  find  that  the  question  involved 
is  purely  one  of  fact,  and  that  the  decision  of  the  board 
upon  the  facts  is  not  without  evidence,  or  against  the 
manifest  weight  of  evidence.  (See  Fawcett  v.  Graham, 
Commissioners'  Decisions,  1869,  p.  113.)  The  verdict  upon 
the  facts  of  four  persons  skilled  in  such  examinations 
ought  to  be  as  persuasive  with  the  Commissioner  as  the 
verdict  of  a  jury  with  the  judge  upon  a  motion  for  a  new 
trial."  (Commissioners'  Decisions,  June  6,  1870.) 

In  the  case  of  White  v.  Purdy,  the  Commissioner 
says : 

"  Upon  a  state  of  facts  substantially  similar,  I  held,  in 
Fawcett  v.  Graham,  ( Commissioners'  Decisions,  1869,  p.  113,) 
BlancJmrd  v.  Strain,  (ib.,  June,  1870,  p.  26,)  and  Jeffers  v. 
Duehamin,  (ib.,  September,  1870,)  that  where  a  case  in 
interference  turns  wholly  upon  a  question  of  fact,  and 
the  evidence  is  conflicting,  and  both  of  the  tribunals 
below  have  decided  the  same  way,  the  Commissioner 
will  not  reverse  the  former  decisions,  unless  they  have 


APPEAL  TO  THE  COMMISSIONER  IN  PERSON.  369 

been  rendered  without  evidence,  or  against  the  manifest 
weight  of  the  evidence. 

"As  the  correctness  of  this  ruling  has  been  challenged 
by  the  appellant  in  the  present  case,  it  may  be  well  to 
state  more  fully  the  reason  and  authority  by  which  it  is 
supported. 

"  The  appellant  seems  to  suppose  that  the  fact  that  an 
appeal  is  allowed  to  the  Commissioner  necessarily  re- 
quires that  officer  to  disregard  the  findings  below ;  that 
he  should  treat  them  as  if  they  had  never  been  made, 
and  should  take  up  the  case  and  examine  it  as  a  case  of 
first  impression,  giving  precisely  the  same  decision  as  he 
would  have  done  if  he  had  heard  it  originally,  instead 
of  the  examiner  of  interferences. 

"  This  view  cannot  be  admitted  to  be  sound.  The 
appeal  is  from  the  decision  of  the  examiner  or  exarn- 
iners-in-chief,  and  it  can  hardly  have  been  intended  that 
the  Commissioner  should  ignore  the  fact  that  there  had 
beeu  any  decision  whatever.  On  the  contrary,  it  would 
seem  manifest  that  the  fact  that  a  decision  had  been  ren- 
dered, from  which  an  appeal  had  been  taken,  must  exer- 
cise such  an  influence  in  a  case  of  doubt,  or  where  testi- 
mony was  nicely  balanced,  as  to  determine  the  appellate 
tribunal  to  follow  and  sustain  the  decision  rather  than  to 
overturn  it.  For,  in  such  a  case,  a  mind  in  doubt  might 
well  suffer  those  doubts  to  be  resolved  in  the  direction 
in  which  another  mind,  competent  to  judge,  had  already 
reached  and  announced  a  decision. 

"Any  other  view  would  render  the  trials  before  the 
examiner  and  examiuers-in-chief  worse  than  useless. 
Cases  might  as  well  be  tried  in  the  first  instance  by  the 
Commissioner,  and  the  delay  and  expense  of  the  former 


370  PROCEDURE  IN  THE  PATENT  OFFICE. 

hearings  be  saved,  if  the  decisions  upon  such  hearings 
are  to  be  treated  precisely  as  though  they  had  never  been 
rendered. 

"  The  position  of  the  party  before  the  Commissioner 
on  appeal  is  not  different  from  that  of  one  who  seeks  to 
set  aside  the  verdict  of  a  jury  or  the  finding  of  a  judge 
upon  a  question  of  fact,  or  who  appeals  in  admiralty  or 
equity  cases  from  the  court  below  to  a  circuit  or  supreme 
court.  In  cases  like  these  we  are  not  without  the  light 
of  authority.  This  will  appear  from  the  following  cases : ' 

"'A  mere  difference  of  opinion  between  the  court  and 
jury  does  not  warrant  the  former  in  setting  aside  the 
finding  of  the  latter;  that  would  be,  in  effect,  to  abolish 
the  institution  of  juries,  and  substitute  the  court  to  try 
all  questions  of  fact.  It  must  be  clear  that  the  jury  has 
erred  before  a  new  trial  will  be  granted,  on  the  ground 
that  the  verdict  is  against  the  weight  of  evidence  or  un- 
supported by  it;  and  if  this  is  the  rule,  as  it  undoubtedly 
is,  even  in  the  court  where  a  cause  is  tried,  and  before 
whom  the  witnesses  appeared  and  testified,  a  fortiori  ought 
it  to  be  the  rule  when  another  court  decides  the  motion 
for  a  new  trial,  with  no  other  knowledge  of  the  facts  than 
is  derived  through  the  imperfect  medium  of  a  written 
statement.'  (McGatrick  v.  Wason,  4  Ohio  St.  JR.,  556.) 

" '  The  findings  of  a  court,  when  substituted  for  a  jury, 
are  entitled  to  the  same  consideration  as  the  verdict  of 
the  latter;  and  it  is  well  settled  that  a  verdict  will  not  be 
set  aside  upon  the  ground  of  an  erroneous  finding,  un- 
less it  is  clear  that  such  is  the  case.'  (Merrick  v.  Boury, 
4  Ohio  St.  E.,  60.) 

"'A  decree,  like  a  verdict,  will  not  be  set  aside  on  the 
ground  of  an  erroneous  finding,  unless  it  is  clearly  against 


APPEAL  TO  THE  COMMISSIONER  IN  PERSON.     371 

the  weight  of  the  evidence  or  clearly  unsupported  by  it. 
Where  there  is  no  evidence  at  all  to  support  a  decree,  it 
will  be  reversed  for  that  reason.'  (Medina  County  Mutual 
Fire  Insurance  Company  v.  Bollmeyer,  4  Ohio  St.  R.,  107.) 

"In  the  case  of  The  Graf  ton,  (1  Blatchf.,  177,)  Nelson, 
J.,  said:  'The  case  involves  two  questions  of  fact.'  * 
*  *  'Both  questions  strike  me  as  being  exceedingly 
close  upon  the  evidence,  and  are  so  nearly  balanced  that 
it  would  be  wrong  for  an  appellate  court  to  interfere. 
According  to  the  impression  which  the  examination  of 
the  proofs  has  left  upon  my  mind,  I  should  not  feel  just- 
ified in  disturbing  the  conclusions  of  the  court  below, 
whether  for  or  against  the  appellant  in  respect  to  either 
question,  as  I  think  different  minds  might  very  well  arrive 
at  different  conclusions.  To  warrant  a  reversal  upon  a 
mere  question  of  fact,  the  preponderance  of  the  evidence 
should  be  of  a  somewhat  decided  character,  such  as  would 
justify  the  granting  of  a  new  trial  in  a  court  of  common 
law,  on  the  ground  that  the  verdict  was  against  the  weight 
of  evidence.  It  seems  to  me  that  this  principle  should 
govern  this  court  in  reviewing  a  question  of  fact  deter- 
mined by  the  district  court.' 

"In  the  case  of  The  Ship  Marcellus  (1  Black,  414)  the 
Supreme  Court  say:  'The  only  question  proposed  by 
these  pleadings  is  one  of  fact.  In  this,  as  in  all  other 
cases  of  the  kind,  there  is  great  discrepancy  and  conflict 
in  the  testimony  of  the  witnesses  as  to  every  averment  in 
the  pleadings.  We  have  had  occasion  to  remark  more 
than  once,  that  when  both  courts  below  have  concurred 
in  the  decision  of  questions  of  fact,  under  such  circum- 
stances parties  ought  not  to  expect  this  court  to  reverse 
such  a  decree,  merely  by  raising  a  doubt  founded  on  the 


372  PROCEDURE  IN  THE  PATENT  OFFICE. 

number  or  credibility  of  witnesses.  The  appellant  in  such 
case  has  all  presumptions  against  him,  and  the  burden 
of  proof  cast  on  him  to  prove  affirmatively  some  mistake 
made  by  the  judge  below  in  the  law  or  in  the  evidence. 
It  will  not  do  to  show  that  on  one  theory,  supported  by 
some  witnesses,  a  different  decree  might  have  been  ren- 
dered, provided  there  be  sufficient  evidence  to  be  found 
on  the  record  to  establish  the  one  that  was  rendered.' 
(See  also  Walsh  v.  Rogers,  13  How.,  284;  The  Water  Witch, 
z'6.,494;  The  Narrayansett,  1  Blatchf.,  211;  Cushmanv.  Ry- 
an, 1  Story,  95;  and  The  Grace  Girdler,  7  Wall,  204.) 

"These  cases  cover  the  findings  of  judges  and  the  ver- 
dicts of  juries  upon  questions  of  fact  in  cases  at  law,  as 
well  as  the  findings  of  fact  in  causes  in  equity  and  admi- 
ralty jurisdiction.  They  fully  establish  the  principle  an- 
nounced in  Fawcett  v.  Graham  and  Blanchard  v.  Strain? 
(Commissioners'  Decisions,  1869,  p.  52.) 

231.  CASE  MAY  BE  REMANDED  FOR  FURTHER  INVESTIGA- 
TION OR  AMENDMENT  TO  EXAMINER. — Where  amendments 
are  admitted  while  an  appeal  to  the  Commissioner  is 
pending,  the  case  should  be  again  submitted  to  the  ex- 
aminer for  investigation.  (Perry  v.  Lay,  ib.,  1869,  p.  3.) 

In  the  case  of  Townsend  ex  parte  the  Commissioner 
sa37s :  "  TJiis  case  is  remanded  to  the  primary  examiner, 
at  his  request,  for  the  purpose  of  giving  further  refer- 
ences to  the  applicant."  (Ib.,  September  14, 1870.)  And 
in  the  case  of  Cree  ex  parte  the  Acting  Commissioner 
says:  "So  far,  then,  as  the  references  go,  it  must  be 
judged  that  applicant  is  entitled  to  a  patent  upon  his 
peculiar  bale.  The  present  claim,  however,  is  objection- 
able. There  is  no  relation  between  this  special  construc- 
tion of  bale  and  the  adjustable  clasp  around  the  neck  of 


APPEAL  TO  THE  COMMISSIONER  IX  PERSON.  873 

the  bottle.  The  function  of  the  two  are  entirely  distinct, 
and  they  cannot  properly  be  claimed  in  combination.  For 
this  reason  the  decision  of  the  examiners-in-chief  is  af- 
firmed, but  with  leave  to  applicant  to  amend  his  claim  and 
specification  before  the  primary  examiner.  (76.,  August 
3, 1870.)  In  the  case  of  Alice  Appleton  ex  parte  the  Com- 
missioner says:  "As  the  case  now  stands,  I  understand 
the  examiner  to  affirm  that  the  mode  already  in  use  of 
connecting  knit-goods  in  common  household  practice  is 
by  a  crochet-stitch,  substantially  the  same  as  that  of  the 
applicant.  This  applicant  does  not  deny  upon  the  record ; 
and  as  no  means  of  comparison  are  furnished,  the  state- 
ment of  the  examiner  must  be  accepted  as  true.  The 
decision  of  the  board  of  examiners-iu-chief  is  affirmed, 
with  leave  to  the  applicant  to  move  to  remand  the 
case  to  offer  opportunity  for  amendment."  (76.,  1869, 
p.  8.) 

232.  APPEAL  FROM  PRIMARY  EXAMINERS  TO  THE  COM- 
MISSIONER.— Decisions  of  examiners  upon  preliminary  or 
intermediate  questions,  or  refusals  to  act,  twice  repeated, 
will  be  re-examined,  upon  application,  by  the  Commis- 
sioner in  person.  (Patent  Office  Rules,  July,  1870.) 

In  the  case  of  Wilkinson  ex  parte  the.  Commissioner 
says:  "This  application  was  rejected  by  the  examiner, 
because,  in  his  opinion,  the  device  was  'essentially  defi- 
cient in  patentable  invention.'  Thereupon  the  applicant 
demanded  a  reference  or  a  patent.  The  examiner  gave 
no  reference,  and  refused  a  patent.  Applicant  reiterates 
his  demand  for  a  reference,  and  appeals  to  the  Commis- 
sioner in  person. 

"He  has  mistaken  both  his  rights  and  his  remedy. 
Eule  37  provides,  that  'upon  a  rejection  of  an  application 
32 


374  PROCEDURE  IN  THE  PATENT  OFFICE. 

for  want  of  novelty,  the  applicant  will  be  furnished  with 
a  specific  reference,'  &c.  The  present  application  is  not 
rejected  'for  want  of  novelty,'  but  for  want  of  'patent- 
able  invention.'  This  objection  may  concede  that  the 
thing  is  new,  but  deny  that  invention  was  involved  in  its 
production.  No  reference  is  required,  either  by  rule  or 
by  law,  to  establish  this  ground  of  rejection.  But  if  it 
were  so,  the  remedy  is  by  appeal  to  the  board  of  exam- 
iners-in-chief,  and  not  the  Commissioner  in  person. 
This  is  not  a  decision  upon  an  intermediate  question,  or 
upon  a  refusal  to  act.  The  examiner's  decision  goes  to 
the  merits  of  the  application,  and  is  adverse  to  the  ap- 
plicant. If  the  examiner  gives  a  general  reference,  and 
the  applicant  is  entitled  to  a  specific  reference,  and  de- 
mands it,  the  remedy  is  by  appeal  to  the  board,  who 
would  then  hold  the  general  reference  to  be  no  reference, 
or  an  insufficient  one,  and  reverse  the  decision  of  the 
examiner  in  rejecting  the  application.  The  case  does 
not  differ  in  principle  from  one  in  which  a  specific  refer- 
ence is  given,  which  the  applicant  claims  to  be  insuffi- 
cient to  form  the  basis  of  a  judgment  of  rejection.  ( Com- 
missioners' Decisions,  March  8, 1870.) 

"The  determination  of  the  question  of  title,  the  num- 
ber of  amendments,  the  structure  of  the  specification, 
the  correspondence  of  the  drawings  with  the  model  or 
the  written  description,  and  the  accuracy  and  complete- 
ness of  the  description,  are  executive  acts,  although  dis- 
cretion is  exercised  in  their  performance;  but  the  judg- 
ment of  the  examiner  upon  what  may  be  called  the 
merits,  the  questions  of  patentability  and  of  novelty,  are 
judicial  acts.  From  the  judicial  acts  of  the  examiner, 
an  appeal  lies  to  the  board;  from  his  executive  acts,  the 


APPEAL  TO  THE  COMMISSIONER  IN  PERSON.  375 

appeal  is  to  the  Commissioner."  (Krake  ex  parte,  Commis- 
sioners' Decisions,  1869,  p.  100.) 

Thus,  in  the  case  of  Collins  ex  parte,  the  Commissioner 
says : 

"  This  is  an  appeal  from  the  primary  examiner.  Ap- 
plicant claims  an  '  improvement  in  screens  or  beds  for 
receiving  and  securing  the  spawn  of  fish,  in  the  art  of 
pisciculture,  whereby  the  process  is  greatly  simplified 
and  the  labor  diminished,  and  it  consists  in  the  use  of  a 
revolving  screen,  arranged  and  operating  as  described/ 

"  He  describes  the  apparatus  in  detail.  It  consists  of 
a  box  placed  in  the  race-way  of  a  fish-pond,  provided  with 
an  upper  .screen  of  wire-cloth  covered  with  gravel,  on 
which  the  fish  lay  their  spawn.  Below  this  is  a  second 
screen  of  finer  material,  forming  an  endless  apron,  which 
receives  the  spawn  from  the  upper  screen  and  conveys  it 
to  a  box  below,  where  it  is  secured  for  use. 

"  This  is  all  very  plain  and  intelligible.  The  apparatus 
is  well  described  by  reference  to  the  drawings  and  by  well- 
chosen  terms,  and  no  one  could  have  the  slightest  diffi- 
culty in  constructing  it  and  putting  it  in  position  for 
operation. 

"The  examiner,  however,  declines  to  examine  the  case 
upon  its  merits,  but  requires  the  applicant '  to  be  more 
specific  in  his  description  as  to  the  manner  of  the  deposi- 
tion of  the  spawn,  and  how  it  passes  through  the  gravel- 
bed,  and  what  is  its  condition  when  it  enters  the  chamber 
below,  where  and  how  the  water  enters  the  tank,  when 
and  where  impregnation  takes  place,  and  where  the  em- 
bryo is  developed. 

"  The  examiner  misconceives  the  nature  of  the  inven- 
tion. It  is  not  an  improvement  in  the  process  of  pisci- 


376  PROCEDURE  IN  THE  PATENT  OFFICE. 

culture,  but  in  spawning-screens.  It  is  a  mechanical 
device,  performing  mechanical  functions.  It  is  a  mere 
instrument,  to  be  emplo37ed  by  those  skilled  in  the  art, 
and  its  nature  and  functions  are  described  in  terms  ad- 
dressed to  them.  It  cannot  be  necessary  to  accompany 
such  description  with  a  treatise  on  fish  culture;  and  if 
the  applicant  had  embodied  such  a  dissertation  in  his 
specification,  he  would  be  justly  obnoxious  to  the  charge 
of '  unnecessary  prolixity,'  which  is  condemned  in  terms 
by  the  statute. 

"  The  decision  of  the  examiner  is  reversed,  and  the  case 
will  be  examined  on  its  merits."  (J6.,  June  8, 1870.) 

And  in  the  case  of  Blanthard  ex  parte  the  Commissioner 


"  This  is  an  appeal  from  the  decision  of  the  primary 
examiner. 

"  The  applicant  claims, '  as  an  improved  article  of  man- 
ufacture, a  mold-board  for  ridging  plows,  having  the  con- 
cavity G,  for  turning  a  furrow,  a  circular  recess,  gf,  and 
an  adjustable  circular  plate,  H,  attached  thereto,  all  as 
and  for  the  purpose  described.' 

"  This  claim  was  rejected  by  the  examiner,  because  the 
claim  was  for  an  'article  of  manufacture,'  while  the  in- 
vention was,  according  to  the  description,  only  'a portion 
of  a  machine.' 

"  The  applicant  seems  to  suppose  the  examiner  to  have 
denied  that  a  part  of  a  machine  was  patentable.  If  this 
were  so,  it  would  unquestionably  be  an  error.  But  the 
examiner  means  to  affirm  no  more  than  that  a  fraction 
of  a  machine  cannot  be  claimed  as  '  an  article  of  manu- 
facture.' 

"By  the  true  construction  of  the  word  'manufacture/ 


APPEAL  TO- THE  SUPREME  COURT  D.  C.       377 

as  used  in  the  patent  act,  it  fairly  covers  only  such  man- 
ufactured articles  or  products  as  are  complete  in  them- 
selves, or,  if  parts  of  a  whole,  are  so  far  complete  as  to 
be  the  subject  of  separate  manufacture  and  sale.  Thus 
a  lamp  chimney  is  intended  to  be  used  with  a  lamp  and 
not  otherwise,  nevertheless  it  may  properly  be  made,  sold, 
and  patented  as  a  new  manufacture. 

"  In  this  case  applicant  admits  that  '  this  mold-board  is 
adapted  and  applicable  only  to  this  single  kind  of  plow. 
It  is,  in  other  words,  a  mere  fraction  of  a  machine.  If  a 
material  part,  it  may  be  claimed  as  such,  but  it  is  not  in 
any  proper  sense  an  article  of  manufacture. 

"  The  decision  of  the  primary  examiner  is  affirmed." 
(76.,  June  13, 1810.) 

233.  FORM  OF  APPEAL  FROM  THE  EXAMINERS-IN-CHIEF 
TO  THE  COMMISSIONER. — 

To  the  Commissioner  of  Patents. 

SIR:  We  hereby  appeal  to  the  Commissioner  in  person  from  the  decision 
of  the  examiners-in-chief  in  the  matter  of  our  application  for  the  reissue 
of  letters  patent  for  an  improvement  in  cotton  presses  granted  to  Anthony 
Bowen,  May  18, 1865.  The  following  are  assigned  for  reasons  of  appeal: 
[Here  follow  reasons.]  WILLIAM  MARTIN. 

CLAUDIUS  JENKINS. 


XIV.  Appeal  to  the  Supreme  Court  of  the  District  of 
Columbia. 


SEC. 

234.  Appeal  to  court  sitting  in  bane. 

235.  Appellant  to  notify  Commis- 


sioner. 


236.  Papers  accompanying  notice. 

237.  Time  of  filing  reasons  of  appeal. 

238.  Reasons  of  appeal  should  not 

be  vague  and  unsatisfactory. 

32* 


SEC. 

239.  Forms      furnished     by      the 

office. 

240.  Appellant  to  furnish  certified 

copies. 

241.  Duties  of  Commissioner. 

242.  Insufficiency  of  Commissioner'a 

reasons. 


378 


PROCEDURE  IN  THE  PATENT  OFFICE. 


SEC. 

243.  Commissioner    and   examiners 

may  be  examined. 

244.  Duty  of  the  court. 

245.  Revision  confined  to  reasons  of 


246.  Appeal  tried  upon  evidence  be- 

fore Commissioner. 

247.  Decision  to  govern  further  pro- 

ceedings. 

248.  Validity  of  patent  may  be  con- 

tested. 

249.  Rules  of  the  court. 

250.  Cases  in  which  an  appeal  does 

not  lie. 


SEC. 

251.  Court  cannot  order  patent  to 

issue  or  consider  amendments 
which  have  not  been  exam- 
ined. 

252.  Decision    binding   only    upon 

questions  submitted. 

253.  Decisions    followed    as   prece- 

dents. 

254.  Form  of  petition  to  the  court. 

255.  Form  of  certificate  of  Commis- 

sioner. 

256.  Form  of  notice  and  reasons  of 

appeal. 


234.  APPEAL  TO  THE  COURT  SITTING.  IN  BANG. — If  a 
party,  except  a  party  to  an  interference,  is  dissatisfied 
with  the  decision  of  the  Commissioner,  he  may  appeal 
to  the  supreme  court  of  the  District  of  Columhia  sitting 
in  bane.     (Act  of  July  8,  1870,  §  48.) 

235.  APPELLANT  TO  NOTIFY  COMMISSIONER-. — When  an 
appeal  is  taken  to  the  supreme  court  of  the  District  of 
Columbia,  the  appellant  shall  give  notice  thereof  to  the 
Commissioner,  and  file  in  the  Patent  Office,  within  such 
time  as  the  Commissioner  shall  appoint,  his  reasons  of 
appeal,  specifically  set  forth  in  writing.     (Ib.,  §49.) 

236.  PAPERS   ACCOMPANYING   NOTICE. — The   mode  of 
appeal  from  the  decision  of  the  office  to  the  supreme 
court  of  the  District  of  Columbia  is  by  giving  written 
notice  thereof  to  the  Commissioner;  said  notice  being 
accompanied  by  the  petition,  addressed  to  the  supreme 
court  of  the  District  of  Columbia,  by  the  reasons  of  ap- 
peal, and  by  a  certified  copy  of  all  the  original  papers 
and  evidence  in  the  case.    (Patent  Office  Rules,  July,  1870.) 


APPEAL  TO  THE  SUPREME  COURT  D.  C.  379 

237.  TIME  OF  FILING  REASONS  OF  APPEAL. — The  rea- 
sons of  appeal  must  be  filed  within  thirty  days  after  no- 
tice of  the  decision  appealed  from.     (Ib.) 

The  filing  of  the  "reasons  of  appeal"  is  essentially  the 
appeal  itself.  (Greenoughv.  Clark,  MS.  Appeal  Gases,  D. 
C.,  1853.)  And  where  the  reasons  of  appeal  are  not  filed 
within  the  time  prescribed  by  the  Commissioner  of  Pat- 
ents, the  right  of  appeal  is  lost.  (Ib.)  For  an  appeal 
cannot  be  made  after  the  time  limited  in  the  notice  of 
appeal.  (Linton  ex  parte,  ib.,  §  1850.)  The  Commissioner 
may,  however,  enlarge  the  time  to  file  such  reasons. 
(Greenough  v.  Clark,  ib.,  1853.)  He  may  extend  the  time 
of  appeal;  it  is  a  matter  within  his  discretion.  (Jmtice  v. 
Jones,  ib.,  1859.) 

238.  REASONS  OF  APPEAL  SHOULD  NOT  BE  VAGUE  AND 
UNSATISFACTORY. — The  reasons  of  appeal  should  be  so 
expressed  that  the  court  may  gather  from  their  language 
what  is  meant  by  them,  but  they  need  not  be  according 
to  any  technical  formula.     (Laidly  v.  James,  MS.  Appeal 
Cases,  D.  C.,  1860.)     They  should  not  be  vague  and  un- 
satisfactory, but  should  involve  some  point  affecting  the 
decision  of  the  Commissioner.     (Winslow  ex  parte,  ib., 
1850.)    And  no  assignment  is  sufficiently  specific  which 
does  not  with  reasonable  certainty  point  out  the  precise 
matter  of  alleged  error.      (Douglass  v.  Blackington,  ib., 
1859.)     Thus,  the  following  alleged  reasons  of  appeal 
have  been  held  to  be  insufficient:  "  That  the  decision  of 
the  Commissioner  was  inconsistent,  as  opposed  to  pre- 
cedents which  have  governed  before;"  ( Winslow  ex  parte, 
ib.,  1850;)  "that  the  decision  of  the  Commissioner  was 
in  opposition  to  a  clear  apprehension  of  the  merits  of 
the  case,"  (ib.;)  or,  "is  against  evidence  or  the  weight 


380  PROCEDURE  IN  THE  PATENT  OFFICE. 

of  evidence;"  (Douglass  v.  Blackington,  ib.,  1859;)  "that 
the  reasons  assigned  by  the  Commissioner  for  rejecting 
an  application  are  irrelevant,  and  do  not  apply  to  the 
subject-matter."  (Aiken  ex  parte,  ib.,  1850.) 

A  reason  of  appeal,  "that  there  was  no  evidence  of 
any  device  or  arrangement  like  that  of  the  applicant," 
was  held  by  Cranch,  C.  J.,  to  be  no  ground  for  revers- 
ing the  decision  of  the  Commissioner,  as  he  might  have 
had  other  grounds  than  the  evidence  oifered  for  the  re- 
jection. (Orooker  ex  parte,  ib.,  1850.)  And  when  the 
reason  of  appeal  was  "that  the  decision  of  the  Commis- 
sioner was  adverse  to  the  opinions  of  skillful  and  com- 
petent practical  and  scientific  men,  who  were  peculiarly 
qualified  to  judge  as  to  the  merits  of  the  particular  in- 
vention," it  was  held  that  this  reason  did  not  involve  the 
question  of  novelty,  and  the  opinion  of  such  experts 
could  not  affect  the  question  of  novelty.  ( Winslow  ex 
parte,  ib.) 

An  objection  to  the  opinion  of  the  Commissioner,  as  to 
the  intention  of  an  invention,  cited  as  a  cause  of  rejection, 
is  not  a  good  "reason  of  appeal."  Whatever  may  have 
been  his  opinion,  his  decision  may  be  correct.  (Crooker 
ex  parte,  ib.,  1850.) 

239.  FORMS  FURNISHED  BY  THE  OFFICE. — Printed  forms 
of  notice  of  appeal,  of  the  reasons  of  appeal,  and  of  the 
petition  will   be  forwarded   on   request.     (Patent  Office 
JRules,  July,  1870.) 

240.  APPELLANT  TO  FURNISH  CERTIFIED  COPIES. — The 
party  appealing  shall  lay  before  the  court  certified  copies 
of  all  the  original  papers  and  evidence  in  the  case.    ( Act 
of  July  8, 1870,  §  51.)     The  original  files  in  the  case  can- 
not be  taken  from  the  office  to  the  court,  but  certified 


APPEAL  TO  THE  SUPREME  COURT  D.  C.        381 

copies  of  the  record  and  references,  to  be  used  as  evi- 
dence, will  be  furnished  at  the  usual  rates.  (Patent  Office 
Rules,  July,  1870.) 

241.  DUTIES  OF  COMMISSIONER. — On  receiving  notice 
of  the  time  and  place  of  hearing  such  appeal,  the  Com- 
missioner shall  notify  all  parties  who  appear  to  be  inter- 
ested therein,  in  such  manner  as  the  court  may  prescribe. 
(Act  of  July  8, 1870,  §  51.)     And  the  Commissioner  shall 
furnish  it  with  the  grounds  of  his  decision,  fully  set  forth 
in  writing,  touching  all  the  points  involved  by  the  rea- 
sons of  appeal. 

242.  REASONS  OF  COMMISSIONER  MAY  BE  INSUFFICIENT, 
YET  His  DECISION  CORRECT. — And  the  insufficiency  of 
the  Commissioner's  reasons  for  rejecting  an  application 
is  not  in  itself  evidence  that  his  decision  is  wrong,  and 
is  no  cause  for  reversing  it.     (Aiken  ex  parts,  Commission- 
ers' Decisions,  1858.) 

And  it.  is  immaterial  what  reasons  the  Commissioner 
assigns  for  his  decision;  his  reasons  may  be  insufficient, 
and  yet  his  decision  be  correct.  (/&.) 

The  court  is  only  required  to  examine  the  conclusions 
which  the  Commissioner  may  have  arrived  at  in  any 
given  case,  and  not  the  process  or  reasons  by  which  such 
conclusions  may  have  been  attained.  (Spencer  ex  parte, 
Ib.} 

243.  COMMISSIONER  AND  EXAMINERS  MAY  BE  EXAM- 
INED.— At  the  request  of  any  party  interested,  or  of  the 
court,  the  Commissioner  and  the  examiners  may  be  ex- 
amined under  oath,  in  explanation  of  the  principles  of 
the  machine  or  other  thing  for  which  a  patent  is  de- 
manded.    (76.) 

An  examiner  may  be  inquired  of  as  to  the  nature  and 


382  PROCEDURE  IN  THE  PATENT  OFFICE. 

features  of  the  invention  under  consideration  and  essen- 
tial to  the  right  claimed,  and  which  may  not  be  suffi- 
ciently set  forth  in  the  report  of  the  Commissioner. 
(Seely  ex  parte,  ib.,  1853.) 

The  officer  of  the  Patent  Office  who  may  attend  before 
the  judge  on  an  appeal  is  not  considered  as  counsel  for 
the  Patent  Office,  or  as  an  advocate  of  either  of  the  par- 
ties litigant.  He  only  attends  for  the  purpose  of  explain- 
ing the  decision  of  the  Commissioner.  (Perry  v.  Cornell, 
ib.,  1847.) 

The  language  of  the  statute  means,  that  the  explanation 
authorized  to  be  required  of  the  Commissioner  and  ex- 
aminers may  be  so  full  and  clear  an  explanation  of  the 
principles  of  the  thing,  as  to  enable  the  judge  duly  to 
apply  and  weigh  the  evidence  offered  to  support  the  issue 
in  the  case,  and  is  not  to  be  limited  to  a  mere  exposition 
of  the  terms  used;  and  such  explanations , go  given  the 
judge  is  bound  to  respect  as  a  part  of  the  case.  (Rich- 
ardson v.  Hicks,  ib.,  1854.) 

244.  DUTY  OF  THE  COURT. — It  shall  be  the  duty  of  said 
court,  on  petition,  to  hear  and  determine  such  appeal, 
and  to  revise  the  decision  appealed  from  in  a  summary 
way,  on  the  evidence  produced  before  the  Commissioner, 
at  such  early  and  convenient  time  as  the  court  may  ap- 
point, notifying  the  Commissioner  of  the  time  and  place 
of  hearing;  and  the  revision  shall  be  confined  to  the 
points  set  forth  in  the  reasons  of  appeal.     ( Act  of  July  8, 
1870,  §  50.) 

245.  REVISION  CONFINED  TO  POINTS  SET  FORTH  IN  REA- 
SONS OF  APPEAL. — The  jurisdiction  of  the  court  on  appeal 
is  confined  to  the  reasons  of  appeal.     (Arnold  v.  Bishop, 
MS.  Appeal  Cases,  D.  G,  1841,  ib.t  §  50;  Smith  v.  Flick- 


APPEAL  TO  THE  SUPREME  COURT  D.  C.       383 

inger,  ib.,  1843;  Cochrane  v.  Waterman,  ib.,  1844;  Aiken 
ex  parte,  ib.,  1850.)  And  however  worthy  of  considera- 
tion a  proposition  or  argument  may  be,  if  not  within  such 
reasons,  it  must  be  disregarded.  (Burlew  v.  O'Neil,  ib., 
1853.)  The  court  can  revise  the  decision  of  the  Com- 
missioner only  in  respect  to  points  involved  in  the  rea- 
sons of  appeal;  and  if  the  Commissioner  did  not  err  in 
those  points,  his  decision  must  be  affirmed,  even  though 
the  judge  should  be  of  the  opinion,  upon  the  evidence  and 
merits  of  the  whole  case,  that  such  decision  was  wrong. 
Arnold  v.  Bishop,  ib.,  1841.)  The  powers  and  jurisdiction 
given  to  it' on  appeal  are  special  and  limited,  and  must 
be  construed  and  exercised  strictly.  (Pomeroy  v.  Conni- 
son,  ib.,  1842.)  The  court  can  only  decide  such  questions 
and  render  such  judgment  as  it  is  expressly  authorized 
by  the  statutes  to  decide  and  render.  (Ib.)  It  is  not  at 
liberty  to  look  into  every  error  of  fact  or  law  which  may 
have  been  committed  in  the  case,  but  only  to  such  as 
have  been  specifically  pointed  out  by  the  reasons  of  ap- 
peal. (Laidly  v.  James,  ib.,  1860.) 

246.  APPEAL  TRIED  UPON  EVIDENCE  BEFORE  COMMIS- 
SIONER.— The  appeal  will  be  tried  upon  evidence  which 
was  in  the  case  and  produced  before  the  Commissioner. 
(Act  of  July  8, 1870,  §  50;  Euks  of  Supreme  Court,  D.  C.,  p. 
94.)  And  the  question  must  be  decided  according  to  such 
evidence.  ( Warner  v.  Goodyear,  MS.  Appeal  Cases,  D.  C., 
1846;  Perry  v.  Cornell,  ib.,  1847.)  The  court  is  limited  by 
law  to  the  papers  and  evidence  which  were  before  the  Com- 
missioner. (Saunders  exparte,  ib.,  1861.)  And  whether  his 
decision  is  correct  or  erroneous  must  depend  upon  the 
evidence  and  proofs  before  him.  (Ruggks  v.  Young,  ib., 
1853.) 


384  PROCEDURE  IN  THE  PATENT  OFFICE 

The  court  on  appeal  has  no  power  to  send  the  case  back 
to  the  Patent  Office,  to  take  proofs  by  competent  experts 
as  to  the  alleged  utility  of  the  invention,  or  to  hear  such 
proofs  on  appeal.  (Saunders  ex  parte,  ib.,  1861.)  But 
where  a  party  has  been  prevented  from  producing  before 
the  Commissioner  proofs  to  support  his  claim,  it  is  the 
duty  of  the  court  to  pursue  such  a  course  as  will  afford 
the  party  an  opportunity  to  produce  such  proofs,  and  the 
court  will  make  an  order  authorizing  the  party  to  take 
and  file  with  his  appeal  evidence  as  to  the  originality  and 
utility  of  his  invention.  (Fultz  ex  parte,  ib.,  1853.) 

Affidavits  cannot  be  considered  on  appeal  which  were 
not  acted  on  by  the  Commissioner  in  forming  his  decis- 
ion nor  taken  by  his  authority.  (Jackson  ex  parte,  ib., 
1856.)  And  an  objection  not  taken  at  the  hearing  before 
the  Commissioner  cannot  be  made  on  appeal  to  the  court. 
(Smith  v.  Flickenger,  ib.,  1843.)  But  if  new  references 
are  made  at  the  trial  of  an  appeal  before  the  court,  as 
grounds  for  the  rejection  of  an  application  for  a  patent, 
and  are  such  as  are  material,  they  will  be  considered  as 
having  deprived  the  applicant  of  his  right  of  amendment, 
and  in  such  case  the  decision  of  the  Commissioner  will 
be  reversed,  and  he  will  be  directed  to  proceed  with  the 
case  anew.  (Hoot  ex  parte,  ib.,  1853.) 

247.  DECISION  TO  GOVERN  FURTHER  PROCEEDINGS  AFTER 
HEARING  THE  CASE. — The  court  shall  return  to  the  Com- 
missioner a  certificate  of  its  proceedings  and  decision, 
which  shall  be  entered  of  record  in  the  Patent  Office,  and 
govern  the  further  proceedings  in  the  case.    (Act  of  July 
8,  1870,  §  50.) 

248.  VALIDITY  OF  PATENT  MAY  BE  AFTERWARDS  CON- 
TESTED.— But  no  opinion  or  decision  of  the  court  in.  any 


APPEAL  TO  THE  SUPREME  COURT  D.  C.  885 

such  case  shall  preclude  any  person  interested  from  the 
right  to  contest  the  validity  of  such  patent  in  any  court 
wherein  the  same  may  be  called  in  question.  (Ib.) 

249.  RULES  OF  THE  SUPREME  COURT  IN  APPEALS  FROM 
THE  COMMISSIONER  OF  PATENTS. — First.  All  appeals  taken 
from  the  decisions  of  the  Commissioner  of  Patents  to  the 
supreme  court  of  the  District  of  Columbia  shall  be  entered 
in  a  docket  to  be  kept  for  that  purpose  by  the  clerk  of 
the  court;  and  every  rule,  motion,  or  order  made  in  every 
pending  appeal,  and  the  final  decision  made  in  each  case, 
shall  be  recorded  in  the  minutes  of  the  court,  to  be  kept 
by  the  clerk  for  the  purpose. 

Second.  The  party  desiring  to  appeal  from  the  decis- 
ion of  the  Commissioner  of  Patents  must  give  written 
notice  thereof  to  the  Commissioner,  accompanied  with 
his  petition  to  the  supreme  court  of  the  District  of  Co- 
lumbia to  grant  him  a  hearing,  and  file  the  reasons  of 
appeal. 

Third.  The  appellant,  previous  to  any  action  on  and 
preparatory  to  the  hearing  of  any  appeal,  must  comply 
with  the  requisites  of  the  law  in  the  Patent  Office,  and 
his  petition  must  state  concisely,  1.  The  application  for 
the  patent;  2.  Its  nature;  3.  The  Commissioner's  re- 
fusal; 4.  The  prayer  of  appeal;  5.  Notice  thereof  to  the 
Commissioner;  6.  The  filing  of  the  reasons  of  appeal  in 
the  Patent  Office. 

To  every  petition  must  be  annexed  a  certificate  of  the 
proper  officer  that  the  requisitions  of  the  law  have  been 
complied  with,  or  an  affidavit  of  the  truth  of  the  facts 
stated  in  the  petition. 

No  notice  to  the  Commissioner  will  be  issued  until  such 
certificate  or  affidavit  be  made  or  produced. 
33 


386  PROCEDURE  IN  THE  PATENT  OFFICE. 

The  appeal  will  be  tried  upon  the  evidence  which  was 
in  the  case  and  produced  before  the  Commissioner. 

Fourth.  The  appellant  must  file  his  argument  in  writ- 
ing, within  five  days  after  the  Commissioner  shall  send 
in  his  report,  and  the  papers,  models,  and  drawings  or 
specimens,  or  within  five  days  after  the  day  of  hearing, 
which  argument  must  state  the  facts  and  law  relied  on, 
together  with  the  authorities  in  support  of  the  same. 

Fifth.  At  the  hearing  oral  arguments  may  be  made, 
not  to  occupy  more  than  one  hour  for  each  counsel  en- 
gaged, and  not  more  than  two  counsel  in  each  case  will 
in  any  case  be  heard. 

Sixth.  In  no  case  will  arguments  before  the  court  be 
heard,  except  made  by  the  party  in  interest  in  person,  a 
member  of  the  bar  of  this  court,  the  superior  or  supreme 
court  of  a  State,  Territory,  or  District  of  the  United  States, 
or  a  duly  licensed  solicitor  of  patents,  in  good  standing 
before  the  Patent  Office,  and  admitted  to  practice  before 
this  court  as  the  appellate  tribunal  from  the  decisions  of 
the  Commissioner  of  Patents. 

Seventh.  The  court,  having  fully  heard  the  appeal, 
shall  return  to  the  Commissioner  a  certificate  of  its  pro- 
ceedings and  decisions,  which  shall  be  entered  of  record 
in  the  Patent  Office,  and  such  decisions,  so  certified,  shall 
govern  the  further  proceedings  of  the  Commissioner  in 
such  case. 

250.  CASES  IN  WHICH  AN  APPEAL  DOES  NOT  LIE. — Noth- 
ing preliminary  to  the  issuing  of  a  patent,  unless  made 
so  by  the  law  authorizing  appeals,  is  a  valid  ground  of 
appeal.  ( Wade  v.  Mathews,  MS.  Appeal  Cases,  D.  C.,  1850.) 
No  appeal  lies  from  matter  within  the  discretion  of  the 
Commissioner,  as  extending  time  to  take  testimony,  &c., 


APPEAL  TO  THE  SUPREME  COURT  D.  C.       387 

(Hopkins  v.  Lewis,  ib.,  1859,)  or  the  refusal  of  the  Com- 
missioner to  grant  a  rehearing.  (House  ex  parte,  ib. ,  1854.) 
And  questions  as  to  the  practicability  or  usefulness  of  an 
invention  and  the  reducing  of  it  to  practice  are  matters 
within  the  discretion  of  the  Commissioner,  and  are  not 
made  the  subjects  of  appeal.  ( Wade  v.  Mathews,  ib.,  1850.) 
And  where  the  decision  of  the  Commissioner  neither 
affirms  nor  denies  the  right  of  an  applicant  to  the  patent, 
(which  he  claims,)  upon  the  merits  of  the  supposed  inven-. 
tion,  it  is  not  such  a  decision  as  is  the  subject  of  appeal. 
The  refusal,  therefore,  of  the  Commissioner  to  revise  and 
revoke  a  decision  of  one  of  his  predecessors  in  office 
rejecting  an  application  for  a  patent,  is  not  a  ground  of 
appeal.  (Janney  ex  parte,  ib.,  1847.) 

The  law  requires  the  Commissioner  to  aid  the  inventor, 
by  information  and  suitable  references,  to  remedy  a  de- 
fective specification  or  claim,  and  to  assist  his  judgment 
in  determining  whether  he  should  withdraw  or  persist  in 
a  rejected  application.  ( Vide  supra,  p.  17.)  But  the  man- 
ner of  doing  so,  how  often,  and  to  what  extent,  is  left  to 
the  discretion  of  the  Commissioner;  and  it  is  not  the  sub- 
ject of  review  whether  this  duty  is  well  and  sufficiently 
performed  in  a  certain  instance.  (  Chambers  ex  parte,  MS. 
Appeal  Cases,  1859.)  And  it  is  not  proper  matter  for  the 
appellate  tribunal  that  the  Commissioner  has  not  given 
a  party  such  reasons  for  his  decision,  and  made  such  sug- 
gestions as  to  enable  him  to  judge  of  the  expediency  of 
abandoning  or  modifying  his  application.  (Spencer  ex 
parte,  ib.,  1859.) 

251.  THE  SUPREME  COURT  HAS  NO  AUTHORITY  TO  ORDER 
A  PATENT  TO  ISSUE,  OR  TO  DECLARE  AN  AMENDED  SPECIFI- 
CATION ENTITLED  TO  A  PATENT,  WHICH  HAS  NEVER  BEEN 


388  PROCEDURE  IN  THE  PATENT  OFFICE. 

RECEIVED  OR  EXAMINED  AT  THE  OFFICE. — In  the  case  of 
Whiteley  and  Gage  ex  parte,  motion,  ( Commissioners' Decisions, 
1869,  p.  53,)  the  Commissioner  says:  "William  Gage  ob- 
tained letters  patent  September  16, 1856,  for  improvement 
in  harvesters,  which  were  assigned  to  himself  and  Andrew 
Whiteley,  who  on  February  18, 1865,  applied  for  permis- 
sion to  surrender  the  same,  and  for  a  reissue  thereof  in 
four  divisions,  designated  as  A,  B,  C,  and  D,  respectively. 

"  The  applications,  after  much  correspondence  and 
various  amendments,  were  finally  rejected  by  the  exam- 
iner, from  whose  decision  an  appeal  was  taken  to  the 
board  of  examiners-in-chief.  The  board  affirmed  the  de- 
cision of  the  primary  examiner,  and  their  decision,  in 
turn,  was  affirmed,  on  appeal,  by  the  Commissioner. 

"  An  appeal  was  taken  from  the  decision  of  the  Com- 
missioner to  Justice  Wylie,  one  of  the  judges  of  the  su- 
preme court  of  the  District  of  Columbia,  who  at  first 
reversed  the  decision  of  the  Commissioner,  but  subse- 
quently reopened  the  case,  reheard  it,  and  affirme.d  the 
Commissioner's  decision.  The  opinion  of  Justice  "Wylie 
was  delivered  May  22,  1866. 

"  On  May  30, 1866,  applicants  presented  another  amend- 
ment, which  the  office  refused  to  receive,  upon  the  ground 
that  the  decision  ©f  the  judge  was  final,  and  that  the  case 
was  no  longer  open  for  amendment. 
.  "  From  this  decision  applicants  again  appealed,  August 
5,  1867 ;  but  no  steps  were  taken  under  the  appeal  until 
August  25, 1868,  more  than  two  years  after  the  last  action 
of  the  office,  when  applicants  appealed  'from  the  final 
action  of  the  department  refusing  to  grant  reissued  pat- 
ents upon  divisions  A,  B,  C,  and  D.' 

"  The  office  replied  to  the  notification  of  appeal,  that 


APPEAL  TO  THE  SUPREME  COURT  D.  C.  389 

the  alleged  appeal  was  too  indefinite  in  its  terms  to  be 
entertained ;  and,  further,  that  there  had  been  no  decision 
of  the  department  (not  already  appealed  from)  from  which 
an  appeal  would  then  lie.  The  office  further  declined  to 
send  the  papers  to  the  judge. 

"On  the  same  day  that  the  appeal  was  taken,  to  wit, 
August  25,  applicants  presented  to  the  office  four  entire 
new  specifications,  which  they  asked  leave  to  substitute 
for  the  original  and  amended  specifications,  for  the  pur- 
pose of  having  the  new  specifications  considered  upon 
the  appeal  before  Justice  Fisher. 

"On  December  8,  1868,  Justice  Fisher  rendered  a  de- 
cision in  the  matter  of  the  appeal  upon  the  four  divisions, 
in  the  following  terms:  'I  hereby  reverse  the  decision  of 
the  Commissioner  of  Patents  of  the  30th  day  of  May, 
1866,  refusing  to  allow  the  applicants  to  amend  their 
specifications  so  as  to  eliminate  therefrom  the  objection- 
able language  which  prevented  their  obtaining  the  reissue 
prior  to  that  date,  and  order  that  the  reissues,  in  divisions 
A,  B,  C,  and  D,  be  forthwith  issued,  in  accordance  with  the 
amended  specifications  filed  August  25,  1868.' 

"At  the  time  of  the  hearing,  if  hearing  there  were, 
before  the  learned  justice,  none  of  the  original  papers 
were  before  him,  no  amended  specifications  had  ever  been 
filed  in  the  office,  and  there  is  no  evidence  to  show  upon 
what  amended  specifications  he  proposed  'forthwith'  to 
issue  the  reissues.  Certain  papers  are  in  the  files,  bearing 
date  August  25,  1868,  without  office  mark,  and  which  are 
not  identified  as  those  which  were  presented  to  the  judge. 
If,  however,  these  were  the  specifications  upon  which  the 
learned  judge  directed  the  patent  to  issue,  it  is  to  be  re- 
marked concerning  them,  that  they  have  never  yet  been 
33* 


390  PROCEDURE  IN  THE  PATENT  OFFICE. 

before  an  examiner  in  the  office,  that  the  novelty  of  tho 
improvements  claimed  has  never  heen  examined  in  any 
way,  and  that  if  the  patents  were  now  to  issue  upon  these 
specifications,  they  would  issue  without  having  been  sub- 
jected to  the  scrutiny  provided  by  law  for  protection 
against  mistake  and  fraud,  and  without  applying  to  them 
any  of  the  tests  which  the  law  has  provided  for  ascertain- 
ing the  novelty  or  utility  of  any  of  the  improvements 
claimed  therein;  How  grave  an  error  this  would  be  will 
appear  when  it  is  further  stated,  that  the  original  patent 
granted  to  "William  Gage  contained  but  two  claims.  As 
in  contemplation  of  law  each  claim  embodies  a  separate 
invention,  these  two  claims  stood,  in  effect,  for  two  pat- 
ents. They  were  very  modest  in  their  scope,  and  the 
machine  which  they  describe  was  of  limited  value.  In 
fact,  so  far  as  is  known  to  the  office,  it  has  never  been 
manufactured.  Yet  from  this  small  beginning  the  four 
specifications,  dated  August  25,  1868,  and  which  the 
learned  judge  orders  the  office  to  patent  without  examin- 
ation 'forthwith,'  present  no  less  than  twenty-one  claims 
each,  or  eighty-four  claims- in  all;  eighty-four  claims,  rep- 
resenting eighty-four  different  inventions,  and  equivalent 
to  eighty-four  different  patents,  springing  from  two.  This 
is  expansion  of  the  most  formidable  character;  and  yet, 
upon  the  simple  presentation  of  this  batch  of  inventions 
to  the  judge,  the  office  is  required  to  patent  them  forth- 
with, without  inquiring  into  novelty,  utility,  form,  or 
structure  of  claims,  or  any  other  matters  which  the  law 
requires  to  be  ascertained  by  the  office  before  any  patent 
shall  issue.  Nay,  more  than  this ;  the  learned  justice,  six 
days  later,  made  a  further  order,  directing  these  eighty- 
four  claims,  when  issued,  to  be  antedated  to  February  18, 


.  APPEAL  TO  THE  SUPREME  COURT  D.  C.       391 

1865,  so  that  the  effect  would  have  been  to  make  them 
retroactive  for  nearly  four  years;  thus  seeking  to  sweep 
within  their  grasp,  as  infringers,  all  manufacturers  who 
for  four  years  had  built  machines  in  utter  ignorance  of 
such  claims,  of  claims  which,  in  fact,  had  no  existence 
prior  to  August  25,  1 868. 

"Each  of  these  orders  was  issued  in  contravention  of 
law.  The  learned  judge  had  no  jurisdiction  to  make 
them.  They  are  absolutely  null  and  void,  and  I  am  com- 
pelled to  decline  to  execute  them.  The  whole  purpose 
of  the  establishment  of  the  Patent  Office  would  be  de- 
stroyed. Its  corps  of  examiners,  its  collection  of  mechan- 
ical and  scientific  books,  its  record  of  patents  heretofore 
granted,  its  vast  collection  of  models  and  drawings  and 
of  foreign  patents,  and,  in  short,  all  its  appliances  for  the 
examination  into  the  novelty  of  alleged  inventions,  would 
be  useless  if  applicants  can  appeal,  upon  any  pretext,  to 
a  judge  of  the  supreme  court  of  this  District,  and,  upon 
such  appeal,  present  him  with  a  new  specification  and  new 
claims,  which  have  never  been  examined,  and  which  may 
embody  the  inventions  of  other  men,  and  procure  from 
him  an  order  to  this  office  to  issue  a  patent  upon  such 
specifications  'forthwith.' 

"No  such  power  is  vested  in  the  appellate  judge  by 
law. 

"The  jurisdiction  of  the  judge  upon  appeal  from  the 
Commissioner  of  Patents  is  limited.  It  extends  only  to 
a  review  of  the  reasons  of  the  Commissioner  for  refusing 
an  application  for  an  original  or  reissued  patent  in  the 
first  instance,  and  to  a  review  of  the  judgment  of  the 
Commissioner  in  interference  cases.  No  power  is  given 
to  the  judges  of  the  supreme  court  of  the  District  to  re- 


392  PROCEDURE  IN  THE  PATENT  OFFICE. 

view  the  executive  or  ministerial  acts  of  the  Commis- 
sioner, or  acts  the  doing  or  not  doing  of  which  rests  in 
his  sound  discretion.  Until  a  very  recent  period  the 
judges  of  that  court  have  uniformly  declined  to  take 
such  jurisdiction  or  to  usurp  the  purely  executive  func- 
tions of  the  Commissioner. 

"In  the  present  case  the  Commissioner  refused  a  pat- 
ent to  applicants  upon  the  claims  as  presented;  they  ap- 
pealed from  his  decision,  and  their  appeal  was  not  sus- 
tained. The  jurisdiction  of  the  judge  over  the  case  ended 
with  the  decision  of  the  appeal.  Subsequently  the  appli- 
cants asked  leave  to  amend.  They  had  amended  four 
times  already,  had  insisted  upon  their  application,  had 
chosen  to  take  a  final  rejection,  which,  upon  appeal,  was 
affirmed. 

"Whether  the-  Commissioner  would  allow  further 
amendment  or  not  was  a  matter  entirely  within  his  dis- 
cretion. It  was  not  a  matter  of  right  with  the  appli- 
cants. It  is  a  motion  for  an  amendment  and  rehearing; 
for  a  new  trial.  Such  motions  are  always  regarded  as 
within  the  discretion  of  the  officer  to  whom  they  are  ad- 
dressed. The  granting  or  refusal  to  grant  them  is  never 
a  proper  subject  of  appeal. 

" In  Wylie  v.  Coxe,  (14  How.,  2,)  the  supreme  court  say: 
1  In  relation  to  the  order,  it  is  plain  no  appeal  will  lie  from 
the  refusal  of  a  motion  to  open  the  decree  and  grant  a 
rehearing.  The  decision  of  such  a  motion  rests  in  the 
sound  discretion  of  the  court  below,  and  no  appeal  will 
lie  from  it.' 

"In  Rouse  exparte  (Book  of  Appeals,  vol.  2,  p.  313)  Judge 
Dunlop  says:  'One  full, fair,  and  impartial  trial  between 
the  same  parties,  and  for  the  same  matter  of  controversy, 


APPEAL  10  THE  SUPREME  COURT  D.  C.  393 

is  all  that  any  citizen  can  claim  under  this  statute  or  any 
other  law  known  or  practiced  by  the  courts  of  this  coun- 
try. If,  from  surprise,  accident,  or  fraud,  or  new-discov- 
ered proof,  or  any  other  legal  cause,  a  fair  and  full  trial 
has  not  been  had,  the  remedy  is  by  rehearing  or  a  new 
trial,  or  some  equivalent  proceeding  in  the  tribunal  where 
the  first  trial  took  place.  The  sound  discretion  of  that 
tribunal  must  be  invoked,  and  from  its  refusal  to  inter- 
fere there  is  no  appeal.' 

"  The  case  of  Rouse,  as  stated  by  the  learned  judge,  was 
as  follows :  *  In  the  present  case  the  Commissioner,  in  the 
exercise  of  his  discretionary  power,  refused  to  Rouse  the 
withdrawal  of  the  first  and  the  filing  of  .his  second  appli- 
cation, and  refused  to  declare  a  new  interference  between 
him  and  Dodge;  and  in  effect  refused  to  give  him  another 
hearing.' 

"In  the  case  of  Raymond  ex  parte  (Book  of  Appeals,  vol. 
3,  p.  443)  Judge  Dunlop  says :  'An  appeal  lies  by  law  from 
the  decision  of  the  Commissioner  to  either  of  the  judges 
of  the  circuit  court  of  the  District  of  Columbia.  Which- 
ever of  the  judges  of  that  court  is  applied  to  decides  it 
finally,  and  no  other  judge  of  that  court -can  entertain  another 
appeal  in  the  same  case  and  review  the  former  decision; 
that  former  decision  is  final  and  conclusive  upon  either 
of  the  other  judges  sitting  at  chambers.' 

"And  yet,  in  the  present  case,  Justice  Fisher  not  only 
reviewed  the  decision  of  Justice  Wylie,  his  brother  jus- 
tice, but  remarked  upon  that  decision  as  follows:  'The 
appellants  thereupon,  I  think,  might  well  have  treated 
the  action  of  Justice  Wylie  in  rehearing  the  case  and  re- 
versing his  own  decision  as  a  mere  nullity,  and  have  right- 
fully demanded  their  reissues  in  their  several  divisions, 


394  PROCEDURE  IN  THE  PATENT  OFFICE. 

A,  B,  C,  and  D,  without  offering  to  amend  their  claims 
in  any  respect  whatever.' 

"In  the  case  of  Janney  ex  parte  (Book  of  Appeals,  vol  1, 
p.  221)  Chief  Justice  Cranch  says:  '  The  act  of  1839  gives 
the  right  of  appeal  to  the  judge  only  in  cases  where  an 
appeal  was  by  the  previous  act  allowed  from  the  decision 
of  the  Commissioner  to  a  board  of  examiners,  and  then 
only  when  a  patent  was  refused.  In  the  present  case  he 
has  not  refused  a  patent.  He  decides  only  that  he  will 
not  examine  the  merits  of  the  claim  which  has  been  twice 
rejected  after  a  full  examination  of  his  predecessors  in 
office.  This  refusal  was  not  a  ground  for  appeal  to  ex- 
aminers under  the  seventh  section  of  the  act  of  1836,  and 
therefore  is  not  a  ground  of  appeal  to  the  judge.' 

"It  is  obvious,  therefore,  that  the  refusal  of  the  Com- 
missioner to  allow  further  amendment,  after  the  case  had 
been  decided  upon  appeal  by  Justice  Wylie,  was  not  upon 
any  ground  the  proper  subject  of  an  appeal,  and  that  Jus- 
tice Fisher  was  without  jurisdiction  in  the  premises. 

"  But  even  if  the  appeal  had  been  properly  entertained, 
he  was  equally  without  jurisdiction  to  make  the  order 
which  he  entered  December  8,  1868.  By  the  terms  of 
that  order  he  directed  '  that  the  reissues,  in  divisions  A, 

B,  C,  and  D,  be  forthwith  issued,  in  accordance  with  the 
amended  specifications  filed  August  25,  1868.' 

"No  power  is  conferred  upon  the  appellate  judge  to 
order  a  patent  to  issue.  His  power,  at  most,  extends  to 
a  reversal  of  the  decision  of  the  Commissioner  from  which 
an  appeal  is  taken.  The  act  of  March  3, 1839,  substitut- 
ing the  chief  justice  of  the  district  court  of  the  District 
of  Columbia  for  the  board  of  examiners,  expressly  de- 
clares that  *  the  Commissioner  shall  also  lay  before  said 


APPEAL  TO  THE  SUPREME  COURT  D.  C.       395 

judge  all  the  original  papers  and  evidence  in  the  case, 
together  with  the  grounds  of  his  decision,  fully  set  forth 
in  writing,  touching  all  the  points  involved  by  the  rea- 
sons of  appeal,  to  which  the  revision  shall  be  'confined.'  *  *  * 
'And  it  shall  be  the  duty  of  the  said  judge,  after  a  hear- 
ing of  any  such  case,  to  return  all  the  papers  to  the 
Commissioner,  with  a  certificate  of  his  proceedings  and 
decision,  which  shall  be  entered  of  record  in  the  Patent 
Office;  and  such  decision,  so  certified,  shall  govern  the  fur- 
ther proceedings  of  the  Commissioner  in  such  case.' 

"  The  act  of  July  4, 1836,  §  7,  provided,  with  reference 
to  the  board  of  examiners,  as  follows :  'And,  on  an  exam- 
ination and  consideration  of  the  matter  by  such  board, 
it  shall  be  in  their  power,  or  of  a  majority  of  them,  to 
reverse  the  decision  of  the  Commissioner,  either  in  whole 
or  in  part;  and,  their  opinion  being  certified  to  the  Com- 
missioner, he  shall  be  governed  thereby  in  the  further  pro- 
ceedings to  be  had  on  such  application.' 

"  It  is  obvious  that  nothing  like  an  order  from  the  judge 
directing  the  patent  to  issue  was  contemplated  by  these 
provisions.  In  fact,  they  give  no  power  to  the  judge  to 
make  any  order  whatsoever.  He  may  decide  the  ques- 
tion before  him  and  may  certify  his  decision,  but  he  is 
not  authorized  to  order  the  Commissioner  to  do  anything 
whatsoever. 

"  This  view  of  the  statute  is  sustained  by  the  decisions. 
In  Arnold  v.  Bishop  (Book  of  Appeals,  vol.  1,  p.  80)  Chief  Jus- 
tice Crauch  says : '  The  words  of  the  act  are  that  the  judge's 
decision  'shall  govern  the  further  proceedings  of  the  Commis- 
sioner in  such  case.'  This  must  apply  only  to  BO  much  of 
the  case  as  is  involved  in  the  reasons  of  appeal;  and  the 
appeal  itself  can  be  considered  only  as  an  appeal  to  so 


396  PROCEDURE  IN  THE  PATENT  OFFICE. 

much  of  the  decision  of  the  Commissioner  as  is  affected 
by  such  reasons.  If,  therefore,  after  the  judge  shall  have 
decided  in  favor  of  the  applicant  upon  the  points  involved 
upon  his  reasons  of  appeal,  other  sufficient  reasons  remain 
for  rejecting  the  claim  for  a  patent,  untouched  by  the  de- 
cision of  the  judge,  it  would  seem  that  the  Commissioner 
might  properly  still  reject  it/ 

"In  Potter  v.  Dixon  (2  Fish.,  381)  it  appeared  that 
in  an  interference  between  Singer  and  Wilson  an  appeal 
had  been  taken  to  Judge  Dunlop,  who,  upon  hearing, 
decided  in  favor  of  "Wilson,  and  ordered  a  patent  to  issue  to 
him.  After  the  return  of  the  papers  to  the  Patent  Office 
the  Commissioner  discovered  that  the  application  inter- 
fered with  the  patent  of  a  third  party,  and  a  new  inter- 
ference was  declared.  Upon  appeal  to  Judge  Dunlop  he 
refused  to  look  into  the  case  upon  its  merits,  but  peremp- 
torily ordered  the  Commissioner  to  execute  his  first  order. 
Upon  this  Mr.  Justice  Nelson  says :  '  Section  eleven  of  the 
act  of  1839  does  not  provide  that  the  Commissioner  shall  issue 
a  patent  to  the  applicant  if  the  decision  of  the  chief  jus- 
tice is  in  his  favor,  but  simply  declares  that  it  shall  '  gov- 
ern the  further  proceedings  of  the  Commissioner  in  such 
case;'  and  so  it  should,  a 5  it  respects  parties  concerned, 
but  not  as  to  other  parties  who  may  come  in  and  claim 
the  benefit  of  the  provision. 

"We  are  quite  clear,  therefore,  that  the  learned  chief 
justice  erred  in  refusing  to  entertain  the  appeal  in  the 
case  of  the  interference  declared  with  the  A.  B.  Wilson 
patent,  and  that  his  order  to  the  Commissioner,  dissolving 
the  interference  and  directing  his  order  in  the  case  of  the 
interference  with  the  I.  M.  Singer  patent  to  be  executed, 
was  a  nullity.' 


APPEAL  TO  THE  SUPREME  COURT  D.  C.        397 

"But  the  learned  justice  not  only  directed  the  patents 
to  be  issued  forthwith,  but  he  directed  them  to  be  ante- 
dated to  February,  1865. 

"Without  discussing  at  this  time  the  question  of  ante- 
dating reissues,  or  stopping  to  expose  the  enormity  of 
such  a  practice,  it  is  sufficient  to  say  that  this  part  of  the 
order  of  the  learned  justice  was  equally  without  author- 
ity. Upon  this  point  the  supreme  court,  of  which  the 
learned  justice  is  a  member,  sitting  in  bane,  upon  an  ap- 
plication for  a  mandamus  to  compel  the  Commissioner, 
in  this  very  case,  to  issue  these  very  reissues  antedated  as 
ordered,  expressly  declared,  Chief  Justice  Cartter  deliv- 
ering the  opinion  of  the  court:  'In  the  case  of  Gage  and 
Whiteley  v.  The  Commissioner  of  Patents,  the  court  has  come 
to  the  conclusion  to  deny  the  application  for  the  man- 
damus, for  the  want  of  jurisdiction  in  the  appellate  judge 
to  make  the  order  the  violation  of  which  is  complained 
of  >  *  *  *  'It  is  very  clear  to  the  mind  of  the  court 
that  Judge  Fisher  had  no  jurisdiction  in  the  premises. 
The  jurisdiction  is  limited.  It  is  limited  to  an  appeal 
circumscribed  to  the  rights  of  the  reissue  of  the  patent.' 

"It  is  believed,  if  the  application  for  the  mandamus 
had  covered  the  first  decision  of  the  learned  justice  as 
well  as  the  second,  that  it  would  have  received  the  same 
condemnation  from  the  full  bench.  My  predecessor  de- 
clined to  obey  these  orders;  and  entertaining  these  views, 
and  sitting  here  not  only  as  the  guardian  of  the  rights 
of  inventors,  but  of  those  of  the  public,  and  especially 
of  the  manufacturing  public,  I  cannot,  under  the  circum- 
stances, consent  to  the  issue  of  these  reissued  patents. 

"As  regards  the  division  of  this  batch  of  applications 
which  is  designated  as  Division  G,  the  facts  are  as  follows : 
34 


398  PROCEDURE  IN  THE  PATENT  OFFICE. 

During  the  pendency  of  the  application  for  divisions  A, 

B,  C,  and  D,  and  before  the  decision  of  Justice  Wylie, 
applicants  amended  Division  A  by  taking  therefrom  the 
fourteenth  claim  and  framing  a  new  division,  called  Di- 
vision E,  with  five  claims  of  invention.     On  October  29, 
1866,  applicants  filed  a  fresh  division,  called  Division  F, 
with  five  more  claims.     These  divisions  were  both  re- 
jected by  the  office,  on  the  ground  that  the  claims  pre- 
sented involved  no  patentable  subject-matter.    They  were 
appealed  to  the  board  of  examiners,  to  the  Commission- 
er, and  finally  to  Justice  Fisher,  who  overruled  the  ac- 
tion of  the  office,  and  ordered  the  patents  to  issue,  with 
antedate  to  February  18,  1865,  more  than  a  year  before 
either  of  the  applications  were  filed  in  the  office.     The 
office  declined  to  antedate,  but  finally  obeyed  the  order 
so  far  as  to  issue  the  patents  in  the  fall  of  1868,  although 
the  novelty  of  the  claims  had  never  been  examined.  Since 
the  last  decision  of  Justice  Fisher,  upon  divisions  A,  B, 

C,  and  D,  the  applicants  have  again  proposed  to  amend 
Division  A  by  taking  therefrom  the  twenty-first  claim, 
framing  a  new  division,  to  be  called  Division  G,  and  ex- 
panding the  single  claim  extracted  from  Division  A  into 
twenty-two  claims. 

"It  will  thus  be  seen  that  the  original  patent  of  "Wil- 
liam Gage,  with  its  two  claims,  has  now  reached,  in  the 
hands  of  applicants,  the  formidable  proportions  of  seven 
patents,  with  no  less  than  one  hundred  and  sixteen  claims. 

"Division  G,  so-called,  cannot  be  allowed.  The  orig- 
inal patent  is  surrendered,  and  has  been  reissued  in  divis- 
ions E  and  F. 

"  It  has  no  vitality  to  support  another  division.  Chief 
Justice  Cartter,  in  Whiteley,  assignee  of  Weeks,  ex  partc, 


APPEAL  TO  THE  SUPREME  COURT  D.  C.        399 

said :  '  This  motion  raises  the  question  simply  as  to  the 
effect  of  the  surrender  of  a  patent.  Can  such  patent, 
after  its  surrender,  be  received  and  treated  by  the  office 
or  the  judge  as  having  legal  vitality  in  such  wise  as  to 
give  authority  for  reissue?  If  I  correctly  comprehend 
the  subject,  it  cannot.  The  surrender  of  a  patent,  and 
lett?rs  patent  granted  in  reissue  for  the  same  subject  upon 
such  surrender,  is  the  death  of  the  first  patent  in  the  life 
of  the  second.  Whatever  of  title  to  the  subject  of  the 
patent  survives  is  to  be  found  in  the  letters  of  reissue, 
ajid  not  in  the  patent  out  of  which  such  letters  grow,  and 
any  application  thereafter  made  for  reissue  should  be 
based  upon  the  reissued  letters  patent.  Inasmuch  as  this 
application  is  made  upon  an  expired  title,  there  is  no 
authority  in  the  office  to  comply  with  it.' 

"  It  is  true  that  this  opinion  of  the  chief  justice  was 
overruled  by  his  associate,  Justice  Fisher,  in  the  same 
case,  and  that  a  patent  was  ordered  to  issue  'forthwith;' 
but,  though  there  be  a  conflict  of  opinion  between  the 
two  justices,  I  still  think  myself  justified  in  quoting  so 
respectable  an  authority  as  Chief  Justice  Cartter. 

"If  it  be  said  that  Division  G  derives  its  vitality  from 
Division  A,  and  not  from  the  surrendered  original,  the 
obvious  answer  is  that  Division  A  was  no  longer  open 
for  amendment.  Whether  the  decision  of  Judge  Wylie 
against  it  was  final,  or  whether  Justice  Fisher  was 
authorized  to  order  it  to  issue  '  forthwith,'  it  was  equally 
removed  from  the  power  of  applicant  to  alter  or  amend 
it  in  any  way. 

"  The  statute  which  permits  a  division  of  reissues  is 
section  5  of  the  act  of  1837,  which  provides, '  That  when- 
ever a  patent  shall  be  returned  for  correction  and  reissue 


400        PROCEDURE  IN  THE  PATENT  OFFICE. 

under  the  thirteenth  section  of  the  act  to  which  this  is 
additional,  and  the  patentee  shall  desire  several  patents 
to  be  issued  for  distinct  and  separate  parts  of  the  thing 
patented,  he  shall  first  pay,'  &c. 

"  This  provision  evidently  contemplates  nothing  more 
than  that,  when  his  rights  are  determined  and  the 
Commissioner  is  willing  to  allow  him  a  patent,  he  may 
receive  distinct  improvements  in  several  patents.  The 
whole  transaction  is  single.  The  divisions  make  up  but 
one  patent,  and  should  be  treated  as  one  application  until 
finally  disposed  of.  No  provision  is  made  for  issuing  a 
patent  for  some  undisputed  part  of  the  invention",  and 
carrying  on  a  contest  subsequently  for  another  patent  for 
some  other  part. 

"Accordingly,  in  Selden  ex  parte,  Book  of  Appeals, 
vol.  3,  p.  459,  Judge  Morsell  said:  'The  case  is  that  ap- 
plication which  embraces  the  whole  matter,  however  it 
may  become  afterward  divided  into  parts,  unless  the  law 
declares  it  to  be  otherwise.'  And  again:  'The  case  is 
that  which  is  set  forth  as  the  ground  of  the  application 
in  the  incipient  stages  of  it,  and  includes  or  embraces  the 
whole,  and  not  a  part  only,  each  part  of  which  is  only  a 
part  of  one  whole;  and  so  it  must  be  here  considered, 
notwithstanding  the  after  effect  produced  by  reissuing 
separate  patents  for  each  part;  and  such  has  been  the 
invariable  contemporaneous  practice  by  the  office  and 
the  judges  ever  since  the  passage  of  the  law.' 

"  Since,  therefore,  the  patent  of  "William  Gage  has  been 
reissued  in  the  divisions  known  as  E  and  F,  I  am  of  opin- 
ion that  no  other  division  of  reissue  for  the  same  patent 
can  be  entertained  by  the  office. 

"  The  fee  paid  by  applicant  is  subject  to  his  order,  but 


APPEAL  TO  THE  SUPREME  COURT  D.  C.  401 

the  application  filed  by  him  and  marked  Division  G  can- 
not be  examined. 

252.  THE  DECISION  OF  THE  -APPELLATE  TRIBUNAL  is 
BINDING  ONLY  UPON  THOSE  QUESTIONS  WHICH  WERE  SUB- 
MITTED TO  ITS  CONSIDERATION. — In  the  case  of  Andrew 
Whiteley,  ex  parte,  Mr.  Justice  Fisher  says :  "  On  the  21st 
day  of  May,  1863,  Whiteley  applied  for  a  reissue  in  three 
divisions,  having  surrendered  the  reissued  patent.  The 
Commissioner  of  Patents  refused  this  second  reissue,  on 
the  ground  that  as  Ball,  Aultmau  &  Co.  possessed  an  ex- 
clusive right  to  the  invention,  under  the  original  patent, 
within  the  limits  of  the  State  of  Ohio,  and  as  the  Haw- 
leys  also  had  the  exclusive  right  to  said  invention  within 
the  limits  of  the  northern  counties  of  Illinois,  under  the 
reissue  of  1858,  Whiteley  was  only  the  grantee  of  an  ex- 
clusive sectional  interest,  and  not  of  the  entire  patent. 

"From  this  decision  Whiteley  prayed  an  appeal  to  a 
justice  of  the  supreme  court  of  the  District  of  Colum- 
bia, but  the  Commissioner  refused  to  grant  the  appeal 
also,  which  was  continued  to  be  withheld  from  him  until 
the  early  part  of  the  year  1867,  when  the  Supreme 
Court  of  the  United  States,  in  a  case  of  mandamus,  to 
which  Whiteley  and  the  late  Commissioner,  D.  P.  Hol- 
loway,  were  the  parties,  declared  that  Whiteley  was 
entitled  to  have  his  appeal  as  a  matter  of  right  under 
the  patent  laws,  and  that  if  the  mandamus  issued  by  the 
supreme  court  of  the  District  of  Columbia,  then  under 
consideration  of  the  Supreme  Court  of  the  United  States, 
had  directed  the  Commissioner  to  allow  the  appeal,  such 
an  order  would  have  been  held  correct. 

"  On  the  9th  day  of  April,  1867,  soon  after  the  Su- 
preme Court  of  the  United  States  had  made  this  declar- 

34* 


402  PROCEDURE  IN  THE  PATENT  OFFICE. 

ation,  Whiteley  filed  his  reasons  of  appeal,  and  brought 
the  case  to  hearing  hefore  Chief  Justice  Cartter,  who, 
on  motion  of  J.  J.  Coombs,  esq.,  on  behalf  of  the  Com- 
missioner of  Patents,  dismissed  the  appeal,  upon  the 
ground  that  on  the  llth  day  of  February,  1867,  White- 
ley  'had  assigned  all  his  right,  title,  and  interest  in  said 
patent  to  Whiteley,  Fissler  &  Kelly,  who,  on  the  18th 
day  of  March,  1867,  assigned  all  their  right,  title,  and 
interest  therein  to  Jonathan  Haines,'  the  first  patentee, 
and  that  this  transfer  divested  him  (Whiteley)  of  all 
interest  or  control  over  the  title  to  the  invention,  'and 
that  the  effect  of  issuing  letters  patent  for  the  residue 
of  the  term — that  is,  of  granting  a  reissue  to  Whiteley' — 
would  be  to  force  a  title  in  defiance  of  the  act  of  the 
party  and  in  fraud  of  his  assignee. 

"The  Commissioner's  decision,  adverse  to  Whiteley, 
had  been  made  several  years  previous  to  the  appeal 
being  brought  before  Judge  Cartter,  and  the  reasons  of 
appeal  were  filed  also  several  years  before,  and  all  long 
before  the  assignment  made  by  Whiteley  to  Whiteley, 
Fissler  &  Kelly,  so  that  the  ground  upon  which  Judge 
Cartter  dismissed  the  appeal  was  not  involved  at  all  in 
any  of  the  questions  raised  by  the  assignment  of  errors 
in  the  appeal.  The  principal  question  raised  by  the 
errors  assigned  in  the  Commissioner's  decision  was 
whether,  at  the  time  of  the  surrender  and  application 
for  a  second  reissue,  on  the  21st  May,  1863,  Andrew 
Whiteley  was  entitled,  as  the  assignee  of  the  original 
patentee,  to  have  a  reissue,  or  whether,  as  the  Commis- 
sioner decided,  he  was  only  the  grantee  of  an  exclusive 
sectional  interest,  and  not  the  assignee  of  the  original 
patent,  and  therefore  not  entitled  to  the  reissue. 


APPEAL  TO  THE  SUPREME  COURT  D.  C.       403 

"  The  appeal,  being  thus  dismissed  without  any  decis- 
ion of  the  question  raised  by  the  appellant's  reasons  of 
appeal,  and  on  matters  arising  long  after  the  rendition 
of  the  Commissioner's  decision,  "Whiteley  again  appealed 
on  the  8th  March,  1868,  assigning  in  his  reasons  of 
appeal  but  one  error,  viz,  that  'the  Commissioner  of 
Patents,  then  D.  P.  Holloway,  erred  by  holding  that  the 
applicant  was  but  the  grantee  of  an  exclusive  sectional 
interest  in  the  patent  sought  to  be  reissued,  and  there- 
fore not  entitled  to  the  reissue,  when  the  assignment 
showed  that  Haines  had  transferred  to  him  the  patent 
itself,  when  no  interest  in  it  was  owned  by  any  other 
person,  and  did  this  for  enabling  the  assignee  to  procure 
its  reissue,  the  same  as  he  might  have  done  in  the  ab- 
sence of  this  assignment.' 

"  The  first  question  for  my  decision  is  whether  the 
appeal  is  now  properly  before  me,  an  appeal  having  been 
brought  in  the  same  case  and  upon  the  same  grounds 
substantially  before  Chief  Justice  Cartter,  and  dismissed 
by  him,  as  before  stated.  If  the  former  appeal  were 
properly  and  lawfully  determined  or  dismissed,  the  pres- 
ent appeal  could  not  be  entertained.  Was  the  former 
appeal  thus  legally  disposed  of?  I  do  not  think  it  was. 
The  jurisdiction  of  the  supreme  court  of  the  District  of 
Columbia  in  appeal  from  the  decisions  of  the  Commis- 
sioner of  Patents  is  a  special  and  limited  jurisdiction. 
It  is  therefore  the  duty  of  the  justice  to  whom  an  appeal 
is  brought  to  confine  himself  strictly  within  the  limits 
prescribed  by  the  act  conferring  that  jurisdiction.  This 
jurisdiction  was  conferred  first  upon  a  board  of  exam- 
aminers  by  act  of  July  4,  1836 ;  afterwards,  by  act  of 
March  3,  1839,  it  was  transferred  to  the  chief  justice  of 


404  PROCEDURE  IN  THE  PATENT  OFFICE. 

this  District;  afterwards,  by  act  of  August  30,  1852,  it 
was  extended  to  the  assistant  judges  of  the  old  court; 
and,  by  the  act  of  March  3,  1863,  it  was  transferred  to 
the  justices  of  the  supreme  court  of  the  District  of  Co- 
lumbia. Section  11  of  the  act  of  March  3,  1839,  pro- 
vides as  follows :  *  In  all  cases  where  an  appeal  is  now 
allowed  by  law  from  the  decision  of  the  Commissioner 
of  Patents  to  a  board  of  examiners,  provided  for  in  the 
seventh  section  of  the  act  to  which  this  is  additional,  the 
party,  instead  thereof,  shall  have  a  right  of  appeal  to  the 
chief  justice  of  the  district  court  of  the  United  States  for 
the  District  of  Columbia,  by  giving  notice  thereof  to  the 
Commissioner,  and  filing  in  the  Patent  Office,  within  such 
time  as  the  Commissioner  shall  appoint,  his  reasons  of 
appeal,  specifically  set  forth  in  writing,  and  also  paying 
into  the  Patent  Oifiee,  to  the  credit  of  the  patent  fund, 
the  sum  of  $25.  And  it  shall  be  the  duty  of  said  chief 
justice,  on  petition,  to  hear  and  determine  all  such  ap- 
peals, and  to  revise  such  decisions  in  a  summary  way 
on  the  evidence  produced  before  the  Commissioner,  at 
such  early  and  convenient  time  as  he  may  appoint,  first 
notifying  the  Commissioner  of  the  time  and  place  of 
hearing,  whose  duty  it  shall  be  to  give  notice  thereof  to 
all  parties  who  appear  to  be  interested  therein,  in  such 
manner  as  said  judge  shall  prescribe.  The  Commis- 
sioner shall  also  lay  before  the  said  judge  all  the  original 
papers  and  evidence  in  the  case,  together  with  the  grounds 
of  his  decision,  fully  set  forth  in  writing,  touching  all  the 
points  involved  by  the  reasons  of  appeal,  to  which  the  revision 
shall  be  confined.'  From  the  words  italicized  it  will  be 
seen  that  the  only  duty  which  the  judge  to  whom  an 
appeal  is  taken  in  a  patent  case  has  to  perform  is  to  de- 


APPEAL  TO  THE  SUPREME  COURT  D.  C.  405 

termine  the  points  involved  by  the  reasons  of  appeal. 
To  this  law  expressly  confines  him.  The  moment  he 
enters  upon,  the  investigation  or  the  determination  of 
matters  de  hors  these  reasons  of  appeal,  he  has  transcended 
the  limits  of  the  jurisdiction  conferred,  and  acting  thus, 
without  power  or  jurisdiction,  his  act  becomes  a  mere 
nullity.  In  the  case  of  Whiteley's  former  appeal,  the 
point  on  which  the  appeal  was  dismissed  was  in  nowise 
involved  by  the  reasons  of  appeal,  and  the  dismissal  is 
therefore,  in  my  judgment,  a  mere  nullity,  and  does  not 
stand  in  the  way  of  the  present  appeal."  (MS.  Appeal 
Cases  D.  C.,  1868.) 

In  the  case  of  Abraham  v.  Fletcher  the  Commissioner 
says :  "  It  seems  as  though  the  necessity  would  never  cease 
to  be  felt  of  recalling  the  true  nature  and  extent  of  the 
jurisdiction  conferred  upon  the  appellate  judge  in  patent 
cases.  Yet  it  is  well  known  that  he  is  the  mere  substi- 
tute for  the  board  of  examiners  provided  in  the  seventh 
section  of  the  act  of  1836.  It  seems  to  be  thought  by 
many  that  his  judicial  character  invests  him  with  further 
prerogatives.  That  is  an  entire  mistake.  His  office 
serves  merely  as  a  designatio  persona,  the  means  of  ascer- 
taining who  shall  constitute  the  tribunal  of  appeal.  He 
derives  no  authority  or  jurisdiction  from  it,  but  has 
merely  those  which  were  conferred  upon  the  former 
board  of  examiners.  How  limited  those  are  has  been 
often  conceded  by  the  judges  when  acting  in  their  ap- 
pellate capacity,  as  may  be  seen  in  repeated  decisions 
referred  to  in  Law's  Digest,  138-141.  (See  more  partic- 
ularly Arnold  v.  Bishop,  138 ;  Richardson  v.  Hicks,  140.) 

"It  is  true  that  in  a  case  somewhat  resembling  the  one 
before  us,  Potter  v.  Dixon,  (2  Fish.,  381,)  Judge  Kelson  is 


406  PROCEDURE  IN  THE  PATENT  OFFICE. 

reported  to  have  said,  that  'the  decision  of  the  chief 
justice'  (the  appellate  .judge)  'was  doubtless  binding 
on  the  Commissioner  as  between  those  pasties,  but  no 
further.'  If  he  had  said  it  was  binding  no  further,  at 
most,  than  as  between  those  parties,  he  would  have  con- 
veyed all  he  probably  meant  to  say,  certainly  all  he  was 
called  upon  to  decide. 

"  The  question  how  far  the  former  decision  was  bind- 
ing, as  between  the  parties  to  it,  upon  the  Commissioner, 
was  not  discussed  before  him,  and  probably  was  not  con- 
sidered. On  the  other  hand,  the  case  plainly  shows  that 
the  rescript  of  the  appellate  judge  was  held  to  be  of  no 
weight,  except  upon  the  precise  points  submitted  to  him. 
If,  notwithstanding  his  order  that  a  patent  issue,  the 
Commissioner  may  still  suspend  it  when  another  party 
interposes  a  claim  to  the  invention,  it  plainly  follows  that 
he  has  the  same  power  when  for  other  reasons  it  appears 
that  there  are  valid  objections  to  the  issue. 

"  The  truth  is,  the  Commissioner  is  bound  to  follow 
the  decision  above  upon  those  points  only  which  were 
raised  by  the  appeal,  and  upon  no  other.  It  is  for  the 
judge  to  say  that  a  decision  of  the  Commissioner  shall 
be  affirmed  or  reversed;  not  to  say  that  a  patent  shall  or 
shall  not  issue.  It  belongs  to  the  Commissioner  alone 
to  determine  that  question,  and  in  determining  it  many 
other  considerations  may  have  to  be  taken  into  the  ac- 
count, besides  those  which  have  been  passed  upon  by  the 
judge.  In  Wade  v.  Matthews,  (5  Opinions  Attorneys  Gen- 
eral, 220,)  it  was  held  by  Reverdy  Johnson,  Attorney 
General,  that  so  long  as  the  Commissioner  had  a  patent 
within  his  control,  which  had  been  ordered  to  issue,  he 
was  bound  to  keep  it  back  if  fresh  objections  to  it  came 


APPEAL  TO  THE  SUPREME  COURT  D.  C.        407 

to  his  knowledge,  so  that  he  was  not  satisfied  that  it 
ought  to  issue. 

"That  is  equally  true,  I  apprehend,  although  his  opin- 
ion upon  other  points  touching  the  invention  has  been 
reversed  on  appeal.  He  is  only  precluded  from  raising 
anew  an  objection  which  has  been  overruled."  (Commis- 
sioners' Decisions,  1869,  p.  50.) 

253.  DECISIONS  NOT  MERELY  ADVISORY,  BUT  TO  BE  FOL- 
LOWED AS  PRECEDENTS.— In  the  case  of  Mason  v.  Doellbor 
and  Houghton  the  Commissioner  says.:  "It  is  conceded  by 
the  counsel  for  the  appellant,  Mason,  that  this  case  pre- 
sents the  precise  question  as  to  abandonment  which  was 
lately  decided  by  Mr.  Justice  Fisher,  upon  appeal  from 
this  office,  in  the  case  of  Rowley  v.  Mason.     I  think  that 
the  decisions  of  the  judges  of  the  supreme  court  of  the 
District  of  Columbia  in  cases  which  are  properly  before 
them  on  appeal  from  this  oifice,  are,  in  other  cases  to 
which  they  apply,  something  more  than  advisory,  and 
that  where,  as  in  the  present  case,  it  is  conceded  that  the 
facts  are  in  substance  the  same  as  the  case  in  which  a 
decision  has  been  rendered,  it  is  the  duty  of  the  Com- 
missioner to  apply  and  enforce  such  decision  without 
hesitation,  whatever  might  be  his  individual  opinion  of 
the  law.     The  decision  of  the  board  of  examiners-in- 
chief  is  therefore  affirmed,  upon  the  authority  of  Rowley 
v.  Mason."    (Commissioners'  Decisions,  1869.  p.  26.) 

254.  FORM  OF  PETITION  TO  THE  SUPREME  COURT  OF  THE 
DISTRICT  OF  COLUMBIA. — 

To  the  Supreme  Court  of  the  District  of  Columbia. 

The  petition  of  George  Thompson,  of  Boston,  in  the  county  of  "Suffolk, 
and  State  of  Massachusetts,  respectfully  showeth:  That  he  has  heretofore 
invented  a  new  and  useful  improvement  in  velocipedes,  and  has  applied  to 
the  Patent  Office  of  the  United  States  for  a  patent  [or  for  the  reissue  of  a 


408  PROCEDURE  IN  THE  PATENT  OFFICE. 

patent  heretofore  granted]  for  the  same,  and  has  complied  with  the  require- 
ments of  the  several  acts  of  Congress  and  with  the  rules  of  the  Patent 
Office  prescribed  in  such  cases;  that  his  said  application  has  been  rejected 
by  the  Commissioner  of  Patents  on  appeal  to  him;  and  that  he  has  filed  in 
said  office  due  notice  to  the  Commissioner  of  Patents  of  this  his  appeal, 
accompanied  with  the  reasons  of  appeal,  and  with  certified  copies  of  all 
the  original  papers  and  evidence  in  the  case,  all  which  will  appear  from 
the  certificate  of  said  Commissioner  of  Patents,  hereto  annexed. 

And  the  said  George  Thompson  prays  that  his  said  appeal  may  be  heard 
and  determined  by  your  honorable  court  at  such  a  time  as  may  be  ap- 
pointed for  that  purpose ;  and  that  the  Commissioner  of  Patents  may  be 
duly  notified  of  the  same,  and  directed  in  what  manner  to  give  notice 
thereof  to  the  parties  interested.  GEORGE  THOMPSON. 

255.  FORM  OF  CERTIFICATE  OF  COMMISSIONER. — 

PATENT  OFFICE,  WASHINGTON,  D.  C.,  July  17,  1869. 
I  hereby  certify  that  the  above-named  George  Thompson  has  complied 
with  the  requisites  of  the  law  necessary  to  perfect  his  aforesaid  appeal. 

SAM'L  S.  FISHER, 
Commissioner  of  Patents. 

256.  FORM  OF  NOTICE  AND  REASONS  OF  APPEAL. — 

To  the  Commissioner  of  Patents: 

George  Thompson,  of  Boston,  in  the  county  of  Suffolk,  and  State  of 
Massachusetts,  hereby  gives  notice  that  he  has  appealed  from  your  decis- 
ion rejecting  his  application  for  a  patent  [or  for  a  reissue  of  a  patent  granted 
to  him  July  7,  1865]  for  improvement  in  velocipedes,  and  of  this  you  are 
respectfully  requested  to  take  notice. 

Accompanying  this  notice  are  certified  copies  of  all  the  original  papers 
and  evidence  in  the  case,  and  a  petition  addressed  to  the  supreme  court  of 
the  District  of  Columbia. 

And  the  said  George  Thompson  assigns  the  following  reasons  for  appeal- 
ing from  the  said  decision  of  the  Commissioner  of  Patents,  viz: 

The  Commissioner  erred  in  deciding  that  the  said  improvement  was  not 
patentable. 

The  Commissioner  erred  in  deciding  that  the  said  invention  was  not  new. 

GEORGE  THOMPSON. 


MANDAMUS  TO  THE  COMMISSIONER. 


409 


XV.  Mandamus  to  the  Commissioner. 


SEC. 

257.  Mandamus  a  remedy  against 

public  officers. 

258.  To  compel  the  performance  of 

ministerial  duties. 

259.  Distinction  between  ministerial 

acts   and   the   ordinary   dis- 
charge of  official  duties. 

260.  Principles  applicable  to  heads 

of   departments    applied    to 


SEC. 

the    Commissioner    of    Pat- 
ents. 

261.  Jurisdiction    of    the    supreme 

court  of  the  District  of  Co- 
lumbia. 

262.  Mandamus  to  Commissioner  of 

Patents. 

263.  Parties  in  mandamus. 

264.  Proceedings  in  mandamus. 


257.  MANDAMUS  A  REMEDY  AGAINST  PUBLIC  OFFI- 
CERS.— In  order  to  maintain  a  system  of  government 
which  will  be  able  to  secure  to  the  citizen  his  rights,  it 
is  necessary  to  have  persons  appointed  or  chosen  to 
administer  the  law.  And  when  persons  are  thus 
clothed  with  the  power,  and  have  assumed  the  duties 
of  a  public  officer,  they  have  taken  upon  themselves 
the  obligation  to  perform  those  duties;  and  if  they  neg- 
lect or  refuse  to  do  so,  any  person  whose  rights  are 
thereby  injuriously  affected  is  entitled  to  demand  relief. 
The  remedy  provided  by  our  system  of  law,  as  well 
as  that  of  England,  is  a  process  issuing  from  the  judi- 
cial branch  of  the  government,  which  seeks  to  compel 
the  officer  to  go  forward  and  do  that  which  is  enjoined 
upon  him  by  the  position  he  holds.  (Moses  on  Man- 
damus, 14.) 

And  generally,  in  all  cases  of  omission  or  mistake, 

where  there  is  no  other  adequate  specific  remedy,  resort 

may  be  had  to  this  high  judicial  writ.     It  not  only  lies  to 

ministerial,  but  to  judicial  officers.     In  the  former  case 

35 


410  PROCEDURE  IN  THE  PATENT  OFFICE. 

it  contains  a  mandate  to  do  a  specific  act;  but  in  the  latter 
only  to  adjudicate,  to  exercise  a  judgment,  or  discretion, 
upon  a  particular  subject.  (Ib.) 

It  may  be  stated  as  a  general  principle,  that  this  writ 
is  only  granted  for  public  persons,  and  to  compel  the 
performance  of  public  duties.  (3  Stephens's  Nisi  Prius, 
2291.)  It  can  be  resorted  to  only  in  those  cases  where 
the  matter  in  dispute,  in  theory,  concerns  the  public,  and 
in  which  the  public  has  an  interest.  The  degree  of  its 
importance  to  the  public  is  not,  however,  scrupulously 
weighed.  (1  Swift's  Digest,  564.)  A  mandamus  gives  no 
right,  not  even  a  right  of  possession,  but  simply  puts  a 
man  in  a  position  which  will  enable  him  to  assert  his 
right,  which  in  some  cases  he  could  not  do  without  it. 
And  "in  order  to  lay  the  foundation  for  issuing  a  writ  of 
mandamus,  there  must  have  been  a  refusal  to  do  that 
which  it  is  the  object  of  the  mandamus  to  enforce,  either 
in  direct  terms,  or  by  circumstances  distinctly  showing 
an  intention  in  the  party  not  to  do  the  act  required."  (3 
Stephens' s  Nisi  Prius,  2292;  Redfieldon  Railways,  441,  note 
5;  Moses  on  Mandamus,  18.) 

258.  To  COMPEL  THE  PERFORMANCE  OF  MINISTERIAL 
DUTIES. — Where  the  heads  of  departments  are  the  po- 
litical or  confidential  agents  of  the  executive,  merely  to 
execute  the  will  of  the  President  in  cases  where  the  ex- 
ecutive possesses  a  constitutional  or  legal  discretion, 
nothing  can  be  more  perfectly  clear  than  that  their  acts 
are  only  politically  examinable.  But  where  a  specific 
ministerial  duty  is  assigned  by  law,  and  individual  rights 
depend  upon  the  performance  of  that  duty,  it  seems 
equally  clear  that  the  individual  who  considers  himself 
injured  has  a  right  to  resort  to  the  laws  of  his  country 


MANDAMUS  TO  THE  COMMISSIONER.  411 

for  remedy,  and  that  mandamus  is  a  proper  remedy. 
(Moses  on  Mandamus,  63.) 

It  was  held,  in  the  ease  of  Marbury  v.  Madison,  that 
"  It  is  not  by  the  office  of  the  person  to  whom  the  writ  is 
directed,  but  the  nature  of  the  thing  to  be  done,  that  the 
propriety  or  impropriety  of  issuing  a  mandamus  is  to  be 
determined.  Where  the  head  of  a  department  acts  in  a 
case  in  which  executive  discretion  is  to  be  exercised,  in 
which  he  is  the  mere  organ  of  executive  will,  it  is  again 
repeated  that  any  application  to  a  court  to  control,  in 
auy  respect,  his  conduct,  would  be  rejected  without  hesita- 
tion. But  where  he  is  directed  by  law  to  do  a  certain 
act,  affecting  the  absolute  rights  of  individuals,  in  the  per- 
formance of  which  he  is  not  placed  under  the  particular 
direction  of  the  President,  and  the  performance  of  which 
the  President  cannot  lawfully  forbid,  and  therefore  is 
never  presumed  to  have  forbidden,  as,  for  example,  to 
record  a  commission,  or  a  patent  for  land,  which  has  re- 
ceived .all  the  legal  solemnities;  or  to  give  a  copy  of  such 
record;  in  such  cases,  it  is  not  perceived  on  what  ground 
the  courts  of  the  country  are  further  excused  from  the 
duty  of  giving  judgment,  that  right  be  done  to  an  injured 
individual,  than  if  the  same  services  were  to  be  performed 
by  a  person  not  the  head  of  a  department."  (1  Cranch, 
137.) 

The  doctrine  that  mandamus  lies  on  the  application 
of  a  private  individual,  and  for  his  benefit,  to  compel  the 
head  of  a  department  to  perform  a  mere  ministerial  duty, 
where  that  duty  is  plain,  seems  to  have  been  fully  main- 
tained in  the  case  of  The  Commissioners  of  the  Land  Office 
v.  Smith,  5  Texas,  471.  • 

259.  DISTINCTION  BETWEEN  MINISTERIAL  ACTS  AND  THE 


412  PROCEDURE  IN  THE  PATENT  OFFICE. 

ORDINARY  DISCHARGE  OF  OFFICIAL  DUTIES. — A  distinction 
is  made  between  the  ministerial  acts  of  one  of  the  heads 
of  department,  and  those  duties  required  in  the  ordinary 
discharge  of  official  duties,  over  which  the  officer  is  re- 
quired to  exercise  judgment  and  discretion.  While  the 
former  can  be  compelled  by  mandamus,  the  latter  can- 
riot.  (Moses  on  Mandamus,  65.) 

In  the  case  of  Decatur  v.  Paulding,  the  Supreme  Court 
of  the  United  States,  in  re  versing  the  decision  of  the  circuit 
court  of  the  District  of  Columbia,  say:  "In  the  case  of 
Kendall  v.  The  United  States,  12  Peters,  524,  it  was  decided 
in  this  court  that  the  circuit  court  for  Washington  county, 
in  the  District  of  Columbia,  has  the  power  to  issue  a  man- 
damus to  an  officer  of  the  federal  Government,  command- 
ing him  to  do  a  ministerial  act."  *  *  *  "  The  head  of  an 
executive  department  of  the  government,  in  the  adminis- 
tration of  the  various  and  important  concerns  of  his  office, 
is  continually  required  to  exercise  judgment  and  discre- 
tion. He  must  exercise  his  judgment  in  expounding  the 
laws  and  resolutions  of  Congress  under  which  he  is  from 
time  to  time  required  to  act.  If  he  doubts,  he  has  a  right 
to  call  upon  the  Attorney  General  to  assist  him  with  his 
counsel;  and  it  would  be  difficult  to  imagine  why  a  legal 
adviser  was  provided  by  law  for  the  heads  of  departments, 
as  well  as  for  the  President,  unless  their  duties  were  re- 
garded as  executive,  in  which  judgment  and  discretion 
were  to  be  exercised.  If  a  suit  should  come  before  the 
court  which  involved  the  construction  of  any  of  these 
laws,  the  court  certainly  would  not  be  bound  to  adopt 
the  construction  given  by  the  head  of  a  department.  And 
if  they  supposed  his  decision  to  be  wrong,  they  would, 
of  course,  so  pronounce  their  judgmerrt.  But  their  judg- 


MANDAMUS  TO  THE  COMMISSIONER.  413 

ment  upon  the  construction  of  a  law  must  be  given  in  a 
case  in  which  they  have  jurisdiction  and  in  which  it  is 
their  duty  to  interpret  the  act  of  Congress,  in  order  to 
ascertain  the  rights  of  the  parties  in  the  cause  before 
them.  The  court  could  not  entertain  an  appeal  from 
the  decision  of  one  of  the  Secretaries  nor  revise  his 
judgment  in  any  case  where  the  law  authorized  him  to 
exercise  discretion  or  judgment.  NOT  can  it  by  man- 
damus act  directly  upon  the  officer,  and  guide  and  con- 
trol his  judgment  or  discretion  in  the  matters  committed 
to  his  care  in  the  ordinary  discharge  of  his  official  duties." 
*  *  *  "  The  interference  of  the  courts  with  the  perform- 
ance of  the  ordinary  duties  of  the  executive  departments 
of  the  government  would  be  productive  of  nothing  but 
mischief;  and  we  are  quite  satisfied  that  such  a  power  was 
never  intended  to  be  given  to  them."  (14  Peters,  497.) 

In  the  case  of  The  United  States  v.  Guthrie,  Mr.  Justice 
Daniel,  in  delivering  the  opinion  of  the  court,  said:  "It 
has  been  ruled,  that  the  only  acts  to  which  the  power  of 
the  courts,  by  mandamus,  extends,  are  such  as  are  purely 
ministerial,  and  with  regard  to  which  nothing  like  judg- 
ment or  discretion,  in  the  performance  of  his  duties,  is 
left  to  the  officer;  but  that,  wherever  the  right  of  judg- 
ment or  decision  exists  in  him,  it  .is  he,  and  not  the 
courts,  who  can  regulate  its  exercise. 

"  These  are  the  doctrines  expressly  ruled  by  this  court 
in  the  case  of  Kendall  v.  Stockton,  12  Peters,  524;  in 
that  of  Decatur  v.  Paulding,  14  Peters,  497;  and  in  the 
more  recent  case  of  Brashear  v.  Mason,  6  How.,  92;  prin- 
ciples regarded  as  fundamental  and  essential,  and  apart 
from  which  the  administration  of  the  government  would 
be  impracticable."  (17  How.,  284.) 
35* 


414  PROCEDURE  IN  THE  PATENT  OFFICE. 

Mr.  Justice  Clifford,  delivering  the  opinion  of  the 
court  in  the  case  of  The  Secretary  v.  Me  Garrahan,  said  : 
"  Since  the  decision  of  this  court  in  the  case  of  Mclnlire 
v.  Wood,  (7  Cranch,  504,)  it  has  heen  regarded  as  the  set- 
tled law  of  the  court  that  the  circuit  courts  of  the  United 
States  in  the  several  States  do  not  possess  the  power  to 
issue  writs  of  mandamus  except  in  cases  in  which  it  may 
be  necessary  to  the  exercise  of  their  jurisdiction.  (-Rigys 
v.  Johnson  Co.,  6  Wallace,  198.) 

"Authority  to  that  effect  might  doubtless  be  given  to 
those  courts  by  an  act  of  Congress;  but  the  insuperable 
difficulty  at  present  is,  that  neither  the  judiciary  act  nor 
any  other  act  of  Congress  has  conferred  upon  them  any 
such  power. 

"Antecedent  to  the  decision  of  this  court  in  the  case 
of  Kendall,  v.  The  United  States,  grave  doubts  were  enter- 
tained whether  any  court  established  by  an  act  of  Con- 
gress possessed  any  such  jurisdiction;  but  the  majority 
of  this  court  came  to  the  conclusion  that  the  circuit 
court  of  this  District  might  issue  the  writ  of  mandamus 
to  an  executive  officer  residing  here,  commanding  him 
to  perform  a  ministerial  act  required  of  him  by  law,  and 
it  is  not  denied  that  the  court  below  possesses  all  the 
power  in  that  behalf  which  the  circuit  court  of  the  Dis- 
trict possessed  at  that  time."  *  *  *  "  Though  man- 
damus may  sometimes  lie  against  an  executive  officer  to 
compel  him  to  perform  a  mere  ministerial  act  required 
of  him  by  law,  yet  such  an  officer,  to  whom  public  du- 
ties are  confided  by  law,  is  not  subject  to  the  control 
of  the  courts  in  the  exercise  of  the  judgment  and  discre- 
tion which  the  law  reposes  in  him  as  a  part  of  his  official 
functions."  (9  Wallace,  298.) 


MANDAMUS  TO  THE  COMMISSIONER.  415 

The  rule  to  be  gathered  from  all  the  -cases  decided 
in  the  Supreme  Court  of  the  United  States,  governing 
mandamus,  to  the  officers  of  the  government,  seems  to  be 
this:  It  cannot  issue  in  a  case  where  discretion  and 
judgment  are  to  be  exercised  by  the  officer,  nor  to  con- 
trol him  in  the  manner  of  conducting  the  general  duties 
of  his  office.  It  can  be  granted  only  where  the  act  re- 
quired to  be  done  is  imposed  by  law — is  merely  minis- 
terial— and  the  relator  without  any  other  adequate  rem- 
edy. (Moses  on  Mandamus,  78.) 

260.  PRINCIPLES  APPLICABLE  TO  HEADS  OF  DEPARTMENTS 
APPLIED  TO  THE  COMMISSIONER  OF  PATENTS. — The  princi- 
ples applied  by  the  Supreme  Court  of  the  United  States, 
in  cases  of  mandamus,  to  heads  of  departments  of  State, 
would  seem  to  be  applicable  in  cases  of  mandamus  to  the 
Commissioner  of  Patents.  (See  Commissioner  of  Patents 
v.  WMteley,  4  Wallace,  522.) 

"261.  SOURCE  OF  POWER  TO  ISSUE  THEWRIT  IN  THE  SUPREME 
COURT  OF  THE  DISTRICT  OF  COLUMBIA. — A  writ  of  man- 
damus, at  common  law,  was  a  command  issuing  in  the 
King's  name,  from  the  court  of  King's  Bench,  and 
directed  to  any  person,  corporation,  or  inferior  court  of 
judicature  within  the  King's  dominions,  requiring  them 
to  do  some  particular  thing  therein  specified,  which  ap- 
pertains to  their  office  and  duty,  and  which  the  court 
of  King's  Bench  has  previously  determined,  or  at  least 
supposes  to  be  consonant  to  right  and  justice.  (2  Black. 
Com.,  110.)  Bat  "in  America  the  authority  to  issue 
the  writ  of  mandamus  does  not  exist  as  a  prerogative 
power  of  the  courts,  but  is  derived  by  grant  from  the 
Government,  through  the  Constitution  or  legislative 
enactments.  And  when  the  power  has  been  granted  in 


416  PROCEDURE  IN  THE  PATENT  OFFICE. 

general  terms  to  a  court,  it  is  to  be  governed  by  the 
common  law  rules  as  to  when  it  is  proper  to  be  issued. 
(Kentucky  v.  Dennison,  24  How.,  66;  In  the  matter  of 
James  Turner,  5  0.  E.,  543;"  Moses  on  Mandamus,  17.) 

The  power  to  issue  the  writ  of  mandamus  was,  under 
the  provincial  government  of  Maryland,  intrusted  to 
the  provincial  court;  which  occupied  under  the  govern- 
ment the  place  which  belongs  to  the  King's  Bench  in 
England.  'The  Maryland  constitution  of  1777  transferred 
the  right  of  issuing  the  mandamus,  with  the  other  powers 
of  the  provincial  court,  to  the  general  court.  (Evans's 
Practice,  18,  403.) 

It  has  been  held  by  the  Supreme  Court  of  the  United 
States,  in  the  case  of  Kendall  v.  The  United  States,  12 
Peters,  526,  that  as  the  act  of  Congress  of  the  27th  of 
February,  1801,  concerning  the  District  of  Columbia, 
and  by  which  the  circuit  court  of  the  District  is  organ- 
ized and  its  powers  and  jurisdiction  pointed  out,  declared 
that  the  laws  of  the  State  of  Maryland,  as  they  now  exist, 
shall  be  and  continue  in  force  in  that  part  of  the  District 
which  was  ceded  by  that  State  to  the  United  States,  and 
as  at  the  date  of  that  act  the  common  law  of  England 
was  in  force  in  Maryland,  and  that  the  power  to  issue  a 
mandamus  in  a  proper  case  is  a  branch  of  the  common 
law  fully  recognized  as  in  practical  operation  -in  that 
State  at  the  time  the  circuit  court  for  the  District  of  Co- 
lumbia was  organized,  it  was  thereby  vested  with  broader 
powers  and  jurisdiction  in  this  respect  than  is  vested  in 
the  circuit  courts  of  the  United  States  in  the  several 
States,  and  that  it  does  possess  the  power  to  issue  the 
writ  of  mandamus,  directed  to  United  States  ministerial 
officers,  when  it  is  a  fit  and  proper  remedy. 


MANDAMUS  TO  THE  COMMISSIONER.  417 

And  in  the  case  of  Decatur  v.Paulding,  (14  Dallas,  515,) 
Taney,  C.  J.,  in  delivering  the  opinion  of  the  court, 
said :  "  In  the  case  of  Kendall  v.  The  United  States  it  was 
decided  in  the  court  that  the  circuit  court  for  Washing- 
ton county,  in  the  District  of  Columbia, -has  the  power 
to  issue  a  mandamus  to  an  officer  of  the  federal  govern- 
ment, commanding  him  to.  do  a  ministerial  act." 

The  act  of  Congress  of  the  3d  of  March,  1863,  which 
established  the  supreme  court  of  the  District  of  Colum- 
bia, provided  that  "the  supreme  court  organized  by 
this  act  shall  possess  the  same  powers  and  exercise  the 
same  jurisdiction  as  is  now  possessed  and  exercised  by 
the  circuit  court  of  the  District  of  Columbia,"  &c. 

262.  MANDAMUS  COMMANDING  THE  COMMISSIONER  TO 
PERFORM  AN  ACT  ENJOINED  BY  LAW. — It  follows,  there- 
fore, that  the  supreme  court  of  the  District  of  Columbia 
has  the  jurisdiction  and  power,  in  proper  cases,  to  grant 
and  enforce  a"  writ  of  mandamus,"  commandingthe  Com- 
missioner of  Patents  to  perform  an  act  enjoined  by  law. 

In  the  case  of  the  Commissioner  of  Patents  v.  Whiteley, 
(4  Wallace,  522,)  the  case  is  stated  as  follows :  "  "Whiteley, 
the  defendant  in  error,  was  the  assignee  of  a  sectional  in- 
terest in  a  patent  granted  to  Haines,  on  the  4th  of  Septem- 
ber, 1855,  for  an  improvement  in  mowing  machines.  He 
held,  by  virtue  of  several  assignments,  all  the  territory 
embraced  in  the  patent,  except  the  State  of  Ohio  and  the 
northern  half  of  the  State  of  Illinois;  and  in  all  the  terri- 
tory, except  as  just  mentioned,  was  assignee  of  all  the 
rights  of  the  patentee. 

"  In  1863  he  applied  to  the  Commissioner  of  Patents 
for  a  reissue  of  the  patent,  according  to  the  thirteenth 
section  of  the  patent  act  of  1836. 


418  PROCEDUEE  IN  THE  PATENT  OFFICE. 

"The  assignees  for  the  State  of  Ohio  and  of  the  north- 
ern half  of  Illinois  did  not  join  in  the  application. 

"The  Commissioner  of  Patents,  after  a  laborious  in- 
vestigation of  the  law  and  comparison  of  various  sections 
of  the  patent  acts,  decided  that  the  applicant,  not  being 
the  assignee  of  the  whole  interest  in  the  patent,  was  riot 
entitled  to  the  reissue  asked  for. 

"  Whiteley  took  no  appeal  from  the  Commissioner's 
decision ;  but  setting  forth  that  his  application  for  reissue 
was«filed  with  the  Acting  Commissioner,  and  the  refusal, 
petitioned  the  supreme  court  of  the  District  of  Columbia 
for  a  mandamus  to  send  an  application  to  an  examiner  to  be 
acted  upon  by  him  as  though  made  by  the  patentee. 

"  The  Commissioner,  in  reply — premising  that  for  the 
reason  that  the  proposed  applicant  was  not  such  an  as- 
signee as  the  law  contemplates,  arid  that  the  application, 
therefore,  was  not  filed  or  entered  upon  the  books  of  the 
office,  and  never  had  been,  and  that  the  fees  required 
on  such  application,  which  had  been  paid  by  the  relator 
to  the  chief  clerk  of  the  office,  on  the  presentation  of  said 
application,  had  not  been  placed  to  the  credit  of  the  pat- 
ent fund,  but  remain  in  the  hands  of  the  chief  clerk, 
personally,  and  subject  to  the  order  of  the  relator — re- 
plied, among  other  reasons, against  the  mandamus: 

"  1.  That  the  object  of  it  was  to  carry  by  appeal  a  pre- 
liminary  question  solely  cognizable  by  him  to  the  supreme 
court  of  the  District,  and  that  such  a  mandamus  would  be 
nugatory. 

"  2.  That  he  had  decided  rightly  in  rejecting  the  appli- 
cation, the  relator  not  coming  within  the  meaning  of  the 
term  '  assignee,'  as  contemplated  in  the  thirteenth  section 
of  the  act  of  1836.  And  in  support  of  this  view  he  sub- 


MANDAMUS  TO  THE  COMMISSIONER.  419 

mitted  as  part  of  his  answer  a  full  law  argument,  which 
now  came  up  in  the  record. 

"The  supreme  court  of  the  District  granted  the  man- 
damus, '  commanding  the  Commissioner  of  Patents  to  refer 
said  application  to  the  proper  examiner,  or  otherwise  examine 
or  cause  the  same  to  be  examined  according  to  law?  The  case 
was  now  here  on  writ  of  error,  brought  by  the  Commis- 
sioner of  Patents,  to  remove  the  proceeding  to  this  court. 
Two  principal  questions  were  raised : 

"  1.  Supposingthe  decision  of  the  Commissioner  to  have 
been  erroneous,  and  that  the  assignee  of  a  sectional  in- 
terest in  a  patent  was  entitled  to  a  reissue,  did  a  man- 
damus such  as  that  above  mentioned  lie  to  correct  the 
decision  ? 

"  2.  Did  the  Commissioner,  in  deciding  as  he  did  that 
the  applicant  as  owner  of  but  a  sectional  interest  was  not 
entitled  to  a  reissue,  decide  correctly?" 

Mr.  Justice  Swayne,  delivering  the  opinion  of  the  court, 
said : 

"  This  case  was  brought  here  by  a  writ  of  error  to  the 
supreme  court  of  the  District  of  Columbia. 

"On  the  4th  of  September,  1855,  a  patent  was  issued 
to  Jonathan  Haines  for  an  improvement  in  mowing 
machines. 

"  On  the  22d  of  November,  1856,  Haines  sold  and  as- 
signed to  Ball,  Aultman  &  Co.  an  exclusive  right  to  the 
invention  and  patent,  within  the  limits  of  the  State  of 
Ohio. 

"  On  the  13th  of  April,  1858,  upon  the  surrender  of 
the  original  patent  by  Haines,  and  upon  his  application, 
without  the  assent  of  Ball,  Aultman  &  Co.,  a  reissue  of 
the  patent  was  granted  to  him. 


420  PROCEDURE  IN  THE  PATENT  OFFICE. 

"On  the  15th  of  January,  1860,  Jonathan  Haines  sold 
and  assigned  to  his  brother,  Ansel  Haines,  one  undivided 
third  part  of  his  interest  in  the  patent. 

"On  the  25th  of  January,  1860,  Jonathan  and  Ansel 
Haines  sold  and  granted  to  Isaac  and  "William  C.  Hawley 
the  exclusive  right  to  the  invention  and  patent  in  certain 
counties  in  the  State  of  Illinois. 

"  On  the  10th  of  April,  1863,  Ansel  Haines  resigned  to 
Jonathan  Haines  all  his  interest  in  the  patent. 

"  On  the  17th  of  April,  1863,  Jonathan  Haines  sold  and 
assigned  all  his  interest  in  the  patent  to  Andrew  White- 
ley,  the  defendant  in  error.  Haines,  at  the  same  time, 
delivered  the  patent  to  Whiteley,  in  order  that  he  might 
surrender  it  and  procure  another  reissue. 

"  Ball,  Aultman  &  Co.  were  applied  to,  but  declined 
to  concur.  It  does  not  appear  that  the  Hawieys  were 
advised  upon  the  subject. 

"On  the  25th  of  January,  1863,  Whiteley  filed  his  ap- 
plication in  the  Patent  Office,  in  conformity  with  the 
provisions  of  the  thirteenth  section  of  the  act  of  1836. 

"  The  Commissioner  of  Patents  declined  to  entertain 
the  application,  upon  the  ground  that  the  applicant  was 
only  the  grantee  of  an  exclusive  sectional  interest,  and 
not  of  the  entire  patent.  He  also  declined'  to  allow  an 
appeal  to  be  taken  from  this  decision.  An  application 
was  thereupon  made  to  the  supreme  court  of  the  District 
of  Columbia  for  a  writ  of  mandamus.  That  court  a  warded 
a  peremptory  writ,  commanding  the  Commissioner  <  to 
refer  said  application  to  the  proper  examiner,  or  other- 
wise examine  or  cause  the  same  to  be  examined  accord- 
ing to  law.'  This  writ  of  error  is  prosecuted  to  reverse 
that  order.  Did  the  court  err  in  making  it? 


MANDAMUS  TO  THE  COMMISSIONER.  421 

"  The  thirteenth  section  of  the  act  of  1836  declares  that, 
under  the  circumstances  therein  stated,  'it  shall  be  law- 
ful for  the  Commissioner,  upon  the  surrender  to  him  of 
such  patent,  *  *  *  to  cause  a  new  patent  to  be 
issued  to  the  inventor,  for  the  same  invention,  for  the 
residue  of  the  period,  then  unexpired,  for  which  the  orig- 
inal patent  was  granted, in  accordance  with  the  patentee's 
corrected  description  and  specifications;  and,  in  case  of 
his  death  or  any  assignment  by  him  made  of  the  original 
patent,  a  similar  right  shall  vest  in  his  executors,  admin- 
istrators, or  assigns.' 

"  The  seventh  section  of  this  act  provides  that,  on  the 
filing  of  any  application  for  a  patent  and  the  payment  of 
the  duty  required,  'the  Commissioner  shall  make,  or 
cause  to  be  made,  an  examination  of  the  alleged  new 
invention  or  discovery/  &c. 

"  The  eighth  section  of  the  act  of  1837  provides,  in 
regard  to  applications  for  the  reissue  of  patents  and  the 
decisions  of  the  Commissioner,  that '  in  all  such  cases  the 
applicant,  if  dissatisfied  with  such  decision,  shall  have 
the  same  remedies  and  be  entitled  to  the  benefit  of  the 
same  privileges  and  proceedings  as  are  provided  by  law 
in  case  of  original  applications  for  patents. 

"  This  renders  it  necessary  to  recur  to  the  act  of  1836, 
and  to  consider  carefully  its  provisions  touching  the  ap- 
plications to  which  it  relates. 

"Both  acts  should  be  liberally  construed  to  meet  the 
wise  and  beneficent  object  of  the  legislature.  Patentees 
are  a  meritorious  class,  and  all  the  aid  and  protection 
which  the  law  allows  this  court  will  cheerfully  give  them. 

"If  the  Commissioner  should  hold  that  a  party  apply- 
ing originally  for  a  patent  'was  not  the  original  and  first 
36 


422  PROCEDURE  IN  THE  PATENT  OFFICE. 

inventor,'  and  should  decide  against  him  upon  that  ground, 
the  applicant  could  undoubtedly  take  an.  appeal  from  his 
decision.  The  Commissioner  having  reached  this  con- 
clusion, would  be  under  no  obligation  to  go  further  and 
examine  any  other  question  arising  'in  the  case,  and  it 
would  not  be  necessary  to  the  right  of  appeal  that  he 
should  do  so. 

"Here  an  assignee  applied  for  the  reissue  of  a  patent. 
It  was  clearly  competent  for  the  Commissioner,  and  it 
was  his  duty,  to  decide  whether  the  applicant  was  an  as- 
signee at  all;  and,  if  so,  whether  he  was  assignee  with 
such  an  interest  as  entitled  him  to  a  reissue  within  the 
meaning  of  the  statutory  provision  upon  the  subject.  The 
latter  question  is  an  important  one.  It  is  as  yet  unsettled, 
and  awaits  an  authoritative  determination. 

"  The  Commissioner  says,  in  his  answer  to  the  rule,  that 
he  could  not  examine  the  application,  because  none  had 
been  filed  in  the  Patent  Office. 

"This  position  is  untenable.  It  is  averred  in  the  peti- 
tion, and  not  denied  in  the  answer — and,  therefore,  as  in 
other  like  cases  of  pleading,  to  be  taken  as  conceded — that 
the  application  was  filed  with  the  Acting  Commissioner. 
It  is  also  admitted  intheanswer  that  the  requisite  amount 
of  fees  had  been  paid  by  the  relator,  but,  it  is  added,  that 
it  had  not  been  placed  to  the  credit  of  the  office,  and  was 
in  the  hands  of  the  chief  clerk,  subject  to  the  relator's 
order. 

"The  relator  had  done  all  in  his  power  to  make  his 
application  effectual,  and  had  a  right  to  consider  it  prop- 
erly before  the  Commissioner. 

"  It  was  so.  If  it  was  not,  a  mandamus  would  clearly  lie  to 
compel  the  Commissioner  to  receive  it.  It  was  his  first  duty 


MANDAMUS  TO  THE  COMMISSIONER.  423 

to  receive  the  application,  whatever  he  might  do  sub- 
sequently. Without  this  initial  step  there  could  be  no 
examination,  and,  indeed,  no  rightful  knowledge  of  the 
subject  on  his  part.  Examination  and  the  exercise  of 
judgment,  with  proper  fruit,  were  to  follow,  and  they  did 
follow. 

"The  Commissioner  found  the  question,  whether  the 
assignee  was  such  a  one  as  the  law  entitled  to  a  reissue, 
lying  at  the  threshold  of  his  duties.  It  required  an  an- 
swer before  he  could  proceed  further.  His  decision  was 
against  the  appellant.  His  examination  of  the  subject  was 
thorough,  and  his  conclusion  is  supported  by  an  able  and 
elaborate  argument.  It  was  made  a  part  of  his  reply  to 
the  rule,  and  is  found  in  the  record. 

"From  this  decision,  whether  right  or  wrong,  the  re- 
lator  had  a  right,  under  the  statute,  to  appeal. 

"  If  the  mandamus  had  ordered  the  Commissioner  to  allow 
the  appeal,  we  should  have  held  the  order  under  which  it  was 
issued  to  be  correct.  But  the  order  was  that  he  should  pro- 
ceed to  examine  the  application.  That  he  had  already 
done.  The  preliminary  question  which  he  decided  was 
as  much  within  the  scope  of  his  authority  as  any  other 
which  could  arise.  Having  resolved  it  in  the  negative, 
there  was  no  necessity  for  him  to  look  further  into  the 
case.  Entertaining  such  views,  it  would  have  been  idle 
to  do  so.  The  question  was  vital  to  the  application,  and 
its  resolution  was  fatal,  so  far  as  he  was  concerned.  Only 
a  reversal  by  the  tribunal  of  appeal  could  revive  it  and 
cast  upon  him  the  duty  of  further  examination. 

"  The  principles  of  law  relating  to  the  remedy  by  man- 
damus are  well  settled. 

"It  lies  where  there  is  a  refusal  to  perform  a  minis- 


424        PROCEDURE  IN  THE  PATENT  OFFICE. 

terial  act  involving  no  exercise  of  judgment  or  discre- 
tion. 

"It  lies,  also,  where  the  exercise  of  judgment  and  dis- 
cretion are  involved  and  the  officer  refuses  to  decide, 
provided  that,  if  he  decided,  the  aggrieved  party  could 
have  his  decision  reviewed  by  another  tribunal. 

"It  is  applicable  only  in  these  two  classes  of  cases.  It 
cannot  be  made  to  perform  the  functions  of  a  writ  of  error. 

"In  Decaturv.  Paulding,  (14  Pet.,  515,)  referring  to  an 
act  of  Congress  under  which  the  relator  in  that  case  claimed 
a  pension  which  had  been  refused  her  by  the  Secretary  of 
the  Navy,  this  court  said :  '  If  a  suit  should  come  before 
this  court  which  involved  the  construction  of  any  of  these 
laws,  the  court  certainly  would  not  be  bound  to  adopt  the 
construction  given  by  any  head  of  a  department;  and  if 
they  supposed  his  decision  to  be  wrong,  they  would  of 
course  so  pronounce  their  judgment.  But  their  construc- 
tion of  a  law  must  be  given  in  a  case  in  which  they  have 
jurisdiction,  and  in  which  it  is  their  duty  to  interpret  the 
act  of  Congress  in  order  to  ascertain  the  rights  of  the 
parties  in  the  cause  before  them.  The  court  could  not 
entertain  an  appeal  from  the  decision  of  one  of  the  Sec- 
retaries, nor  reverse  his  judgment  in  any  case  where  the 
law  authorizes  him  to  exercise  discretion  or  judgment; 
nor  can  it  by  mandamus  act  directly  upon  the  officer,  and 
guide  or  control  his  judgment  or  discretion  in  the  matters 
committed  to  his  care  in  the  ordinary  discharge  of  his 
official  duties.  *  *  *  The  interference  of  courts  with 
the  performance  of  the  ordinary  duties  of  the  executive 
department  of  the  government  would  be  productive  of 
nothing  but  mischief,  and  we  are  quite  satisfied  that  such 
a  power  was  never  intended  to  be  given  to  them. 


MANDAMUS  TO  THE  COMMISSIONER.  425 

'  This  case,  as  presented  to  the  court  below,  was  within 
neither  of  the  categories  above  mentioned.  The  court, 
therefore,  erred  in  making  the  order  to  which  the  Com- 
missioner objected. 

"  The  main  question  passed  upon  by  the  Commissioner, 
and  which  was  supposed  to  underlie  this  case,  is  not  be- 
fore us  for  consideration.  If  it  were,  as  at  present  advised, 
we  are  not  prepared  to  say  that  the  decision  of  the  Com- 
missioner was  not  correct. 

"  The  order  of  the  courtbelow,  awardingthe  mandamus, 
is  reversed  with  costs,  and  it  is  ordered  by  this  court  that 
the  application  of  the  relator  be  by  that  court  overruled 
and  dismissed." 

263.  PARTIES  rsT  MANDAMUS. — The  writ  of  mandamus, 
from  its  very  nature  and  definition,  is  "  a  command  issuing 
in  the  name  of  the  sovereign  authority."     (Bouvier's  Diet.) 
And  although  it  is  substantially  a  civil  remedy,  (2  Carter's 
Ind.  R.,  423,)  yet  in  the  United  States  it  has  always  been 
issued  in  the  name  of  the  sovereignty  by  which  it  has 
been  authorized.     (Moses  on  Mandamus,  194.) 

The  suit,  therefore,  is  properly  prosecuted  in  the  name 
of  the  United  States  against  the  Commissioner  of  Patents. 

264.  PROCEEDINGS  IN  MANDAMU.S. — The  writ  can  only 
be  obtained  after  a  rule  to  show  cause  has  been  laid  by 
the  court  and  a  copy  of  it  has  been  served  on  the  Com- 
missioner of  Patents.     (Brosius  v.  Renter,  1  Harr.  and 
Johns.,  481.)     The  rule  is  obtained  by  filing  a  petition, 
in  which  all  the  facts  and  circumstances  entitling  the 
party  to  the  mandamus  are  stated,  and  which  is  verified 
by  oath.     (Evans's  Practice,  404.)     The  petition  should 
present  to  the  court  a  prima  facie  case  of  duty  on  the 
part  of  the  Commissioner  to  perform  the  act  demanded, 

36* 


426  PROCEDURE  IN  THE  PATENT  OFFICE. 

and  an  obligation  to  perform  it.  (Moses  on  Mandamus, 
284.)  It  should  also  appear  that  a  demand  has  been 
made  upon  the  Commissioner  to  do  the  thing  he  is 
sought  to  be  compelled  to  do,  and  that  he  has  refused 
or  neglected  to  do  it,  (Stephens' s  Nisi  Prius,  23;  9  Mich. 
B.,  328,)  and  that  he  has  it  in  his  power  to  perform  the 
act.  (Bidding  v.  Bell,  4  Gal.  B.,  333.) 

The  Commissioner  who  appears  to  show  cause  why  a 
mandamus  should  not  be  issued  does  so  by  what -is  some- 
times called  a  return,  sometimes  an  answer.  (Evans's 
Practice,  404.)  The  return  must  either  deny  the  facts  on 
which  the  claim  of  the  relator  is  founded  or  must  state 
other  facts  sufficient  in  law  to  defeat  the  relator's  claim. 
(10  Wend.,  20;  35  .Bark,  105;  37  Penn.  S.  B.,  237.) 

When  the  return  is  made  and  filed,  if  insufficient,  the 
relator  may  move  to  quash  it,  (Evans's  Practice,  405; 
People  v.  State,  2  Barb.,  554;  Commonwealth  v.  Commis- 
sioners,^ Penn.  S.  .R.,218;)  it  may, however,  be  amended, 
or  a  supplementary  return  filed,  should  it  prove  defect- 
ive,(Evans's  Practice,  405,)  and  a  return  on  leave  of  court 
may  be  amended  in  matters  of  substance  even  after 
exceptions  have  been  made.  (Doug.  -R.,135;  10  Pick. 
B.,  59.)  The  motion,  however,  for  leave  to  amend  should 
probably  set  forth  specifically  the  points  sought  to  be  cor- 
rected. (State  v.  County  Judge,  12  Iowa,  237.) 

Motions  or  applications  for  mandamus  againstthe  Com- 
missioner of  Patents  may  be  heard  before  the  general 
term  of  the  supreme  court  of  the  District  of  Columbia 
in  the  first  instance,  or  by  one  of  the  justices  at  cham- 
bers, or  in  special  term,  but  not  until  the  petition,  veri- 
fied by  affidavit  and  stating  the  grounds  of  the  applica- 
tion, has  been  filed  and  docketed,  and  motion  to  quash 


DESIGNS. 


427 


may  be  heard  in  the  same  manner.  (Rules  of  Supreme 
Court  of  D.  C.) 

Upon  argument  of  the  law,  arising  upon  the  facts  dis- 
closed, the  court  decide  that  a  mandamus  shall  or  shall 
not  go.  (Evans's  Practice,  404.) 

The  writ  is  served  by  delivering  it  to  the  person  to 
whom  it  is  directed.  Courts  enforce  compliance  with 
the  peremptory  writ  by  attachment  of  contempt.  The 
application  for  an  attachment  is  made  by  a  motion,  upon 
which  the  defendant  may  show  cause,  unless  the  con- 
tempt be  gross,  in  which  case  the  rule  may  be  made 
absolute  at  first.  ( Tidd's  Practice,  484.) 


XVI.  Designs. 


SEC. 

265.  Subject-matter  of  design  pat- 

ents. 

266.  Models  may  be  dispensed  with. 

267.  Term  for  which  granted. 

268.  Term  may  be  extended. 

269.  Proceedings    the  same  as    in 

other  cases. 

270.  Photographs. 

271.  Classification  of  designs. 

272.  Disputed  questions. 

273.  Design  may  embrace  a  class  of 

ornaments. 

274.  Designs  patentable  on  account 

of  utility. 

275.  Modes  of  operation  not  to  be 


SEC. 

monopolized  under  a  patent 
for  design. 

276.  Applicant  to  elect  the  term  of 

the  patent  on  application. 

277.  No  provision  made  for  use  and 

sale  prior  to  application. 

278.  Design  shown  in  a  patent  for 

mechanical  invention  lost. 

279.  Number  of  claims  allowed. 

280.  Application  for  mechanical  in- 

vention oannot  be  changed  to 
application  for  design. 

281.  Form  of  petition. 

282.  Form  of  specification. 

283.  Form  of  oath. 


265.  SUBJECT-MATTER  OF  DESIGN  PATENTS. — Any  person 
who,  by  his  own  industry,  genius,  efforts,  and  expense, 
has  invented  or  produced  any  new  and  original  design 
for  a  manufacture,  bust,  statue,  alto-relievo,  or  bas-relief; 


428  PROCEDURE  IN  THE  PATENT  OFFICE. 

any  new  and  original  design  for  the  printing  of  woolen, 
silk,  cotton,  or  other  fabrics;  any  new  and  original  im- 
pression, ornament,  pattern,  print,  or  picture,  to  be  print- 
ed, painted,  cast,  or  otherwise  placed  on  or  worked  into 
any  article  of  manufacture;  or  any  new,  useful,  and  orig- 
inal shape  or  configuration  of  any  article  of  manufac- 
ture, the  same  not  having  been  known  or  used  by  others 
before  his  invention  or  production  thereof,  or  patented 
or  described  in  any  printed  publication,  may,  upon  pay- 
ment of  the  duty  required  by  law  and  other  due  pro- 
ceedings had,  the  same  as  in  cases  of  inventions  or  dis- 
coveries, obtain  a  patent  therefor.  (Act  of  July  8, 1870, 
§  71 ;  vide  supra,  p.  34,  §  71.) 

266.  MODELS  MAY  BE  DISPENSED  WITH. — The  Commis- 
sioner may  dispense  with  models  of  designs  when  the 
design  can  be  sufficiently  represented  by  drawings  or 
photographs.     (Ib.,  §  72.) 

267.  TERM  FOR  WHICH  GRANTED. — Patents  for  designs 
may  be  granted  for  the  term  of  three  years  and   six 
months,  or  for  seven  years,  or  for  fourteen  years,  as  the 
applicant  may,  in  his  application,  elect.     (/&.,  §  73.) 

268.  PATENTS  FOR  DESIGNS  MAY-  BE  EXTENDED. — Pat- 
entees of  designs  issued  prior  to  March  2,  1861,  shall  be 
entitled  to  extension  of  their  respective  patents  for  the 
term  of  seven  years,  in  the  same  manner  and  under  the 
same  restrictions  as  are  provided  for  the  extension  of 
patents  for  inventions  or  discoveries  issued  prior  to  the 
2d  day  of  March,  1861.     (Ib.,  §  74.)     Upon  extending  a 
patent  for  a  design  its  utility  may  be  taken  into  account 
in  estimating  its  value  and  importance  to  the  public. 
(B.  L,  Solomon  ex  parte,  Commissioners'  Decisions,  1869,  p. 
49.) 


DESIGNS.  429 

269.  PROCEEDINGS  THE  SAME  AS  IN  OTHER  CASES. — The 
petition,  oath,  specification,  and  other  proceedings,  are 
the  same  as  for  other  patents.     (Patent  Office  Rules,  July, 
1870.) 

270.  PHOTOGRAPHS. — Photographs"  are  received  for  the 
illustration  of  works  of  design  only.    One  must  be  pasted 
upon  thick  drawing-paper,  but  in  every  case  where  this 
mode  of  illustration  is  employed  by  an  applicant  he  will 
be  required  to  deposit  in  the  office  the  glass  or  other 
"  negative "'  from  which  the  photograph  is  printed,  so  that 
exact  official  copies  may  be  made  therefrom  when  de- 
sirable.    (Ib.} 

271.  CLASSIFICATION  OF  DESIGNS. — In  the  case  of  Bar- 
tholomew ex  parts,  the  Commissioner  says :  ""  Letters  pat- 
ent for  designs  have  increased  in  importance  within  the 
last  few  years.     Formerly,  but  few  were  granted ;  now, 
many  are  issued.     To  this  day  they  have  made  so  little 
figure  in  litigation   that  but  three  reported  cases  are 
known  in  which  design  patents  have  come  into  contro- 
versy.    With  their  increase  questions  have  arisen  con- 
cerning their  scope  and  character  which  have  given  rise 
to  dispute  and  to  inquiry  as  to  the  correctness  of  the 
current  practice  of  the  office  in  this  branch  of  inven- 
tion.   While  on  the  one  hand  it  is  insisted  that  the  prac- 
tice has  always  been  uniform,  and  is  therefore  now  fixed 
and  definite,  on  the  other  it  is  asserted  that  there  has 
never  been,  and  is  not  now,  any  well  defined  or  uniform 
practice  either  in  the  granting  or  refusal  of  design  pat- 
ents. 

"  The  act  of  1836  made  no  provision  for  the  patenting 
of  designs.  The  earliest  legislation  upon  this  subject  is 
found  in  the  act  of  August  29, 1842,  section  3 ;  and  the 


430  PROCEDURE  IN  THE  PATENT  OFFICE. 

only  legislation  upon  this  subject  is  found  in  this  section 
and  in  section  11  of  the  act  of  March  2,  1861. 

"  The  definition  of  the  subject-matter,  or,  in  other 
words,  of  a  '  design,'  is  the  same  in  both  acts.  It  is  as 
follows :  '  That  any  citizen,  &e.,  who  by  his,  her,  or  their 
own  industry,  genius,  efforts,  and  expense,  may  have  in- 
vented or  produced  any  new  and  original  design  for  a 
manufacture,  whether  of  metal  or  other  material  or  ma- 
terials, and  original  designs  for  a  bust,  statue,  bas-relief, 
or  composition  in  alto  or  basso-relievo,  or  any  new  and 
original  impression  being  formed  in  marble  or  other  mate- 
rial, or  any  new  and  useful  pattern,  print,  or  picture,  to  be 
either  worked  into  or  worked  on,  or  printed,  or  painted, 
or  cas.t,  or  otherwise  fixed  on  an}7  article  of  manufacture, 
or  any  new  and  original  shape  or  configuration  of  any  ar- 
ticle of  manufacture  not  known  or  used  by  others,'  &e. 

"  This  definition  embraces  five  particulars  : 

"  1.  A  new  and  original  design  for  a  manufacture. 

"  2.  An  original  design  for  a  bust,  statue,  &c. 

"  3.  A  new  and  original  impression  or  ornament  to  be 
placed  on  any  article  of  manufacture. 

"  4.  A  new  and  useful  pattern,  print,  or  picture,  to  be 
worked  into  or  worked  on,  or  printed,  or  painted,  or  cast, 
or  otherwise  fixed  on  any  article  of  manufacture. 

"  5.  A  new  and  original  shape  or  configuration  of  any 
article  of  manufacture. 

"  The  first  three  of  these  classes  would  seem  to  refer 
to  ornament  only;  the  fourth,  to  ornament  combined 
with  utility,  as  in  the  case  of  trade-marks;  and  the  fifth, 
to  the  shapes  or  forms  of  manufactured  articles,  which, 
for  some  reason,  were  preferable  to  those  previously 
adopted." 


DESIGNS.  431 

272.  DISPUTED  QUESTIONS. — "The  disputed  questions 
which  have  thus  far  arisen  under  these  definitions  are : 
1.  "What  variations  may  be  claimed  or  covered  by  the 
patent,  consistent  with  unity  of  design  ?     2.  Is  a  new 
shape  of  an  article  of  manufacture,  whereby  utility  is 
secured,  a  subject  of  protection  under  this  act  ?  and  3. 
Is  mechanical  function  of  any  kind  covered  by  it  ? 

"As  to  the  first  of  these  questions,  it  seems  to  have 
been  assumed  that  the  design  spoken  of  in  all  parts  of 
the  sections  referred  to  covered  a  fixed,  unchangeable 
figure ;  that  the  protection  of  the  letters  patent  did  not 
extend  to  any  variation,  however  slight,  but  that  such 
variation  constituted  a  new  design,  might  be  covered  by 
a  new  patent,  and  might  safely  be  used  without  infringe- 
ment of  the  first.  This,  it  is  said,  is  the  correct  theory 
of  the  law,  and  has  been  the  uniform  adjudication  of  the 
office." 

273.  A  PATENT  FOE  A  DESIGN  MAY  EMBRACE  A  GENUS 
OR  CLASS   OF  ORNAMENTS,  AS  WELL  AS  ONE   SPECIES. — 
"Neither  of  these  statements  is  absolutely  correct.     The 
law  by  no  means  defines  a  design  with  such  strictness. 
The  language  is,  '  new  and  original  design  for  a  man- 
ufacture,' *  new  and  original  impression  or  ornament,' 
'new  and  original  shape  or  configuration.'     It   would 
seem  to  be  too  plain  for  argument  that  the  new  design, 
or  impression,  or  shape  might  be  so  generic  in  its  char- 
acter as  to  admit  of  many  variations,  which  should  em- 
body its  substantial  characteristics  and  be  entirely  con- 
sistent with  a  substantial  identity  of  form.     Thus,  if  the 
invention  were  of  a  design  for  an  ornamental  button,  the 
face  of  which  was  grooved  with  radial  rays,  it  would  seem 
that  the  first  designer  of  such  a  button  might  properly 


432  PROCEDURE  IN  THE  PATENT  OFFICE. 

describe  a  button  of  five  rays,  and,  having  stated  that  a 
greater  number  of  rays  might  be  used,  might  claim  a 
design  consisting  generally  of  radial  rays,  or  of  '  five  or 
more'  rays,  and  that  it  could  not  be  necessary  for  him 
to  take  out  a  patent  for  each  additional  ray  that  could 
be  cut  upon  his  button.  So,  if  the  design  were  the  orna- 
mentation of  long  combs  by  a  chain  of  pearls,  it  would 
seem  that  a  claim  for  such  a  design  might  be  maintained 
against  one  who  arranged  the  pearls  either  in  curved  or 
straight  lines,  or  who  used  half  pearls  only ;  and  that 
such  modifications,  if  they  had  occurred  to  the  designer, 
might  properly  have  been  enumerated  in  his  specifica- 
tion as  possible  and  equivalent  variations.  In  short,  I 
can  see  no  reason,  under  the  law,  why  designs  may  not 
be  generic,  why  what  are  called  'broad  claims'  may  not 
be  made  to  them,  and  why  the  doctrine  of  artistic  or 
aesthetic  equivalents  may  not  be  applied  to  them. 

"  This  has  been  recognized  to  a  greater  or  less  extent 
in  the  adjudication  of  the  courts  and  in  the  practice  of 
the  office.  One  of  the  reported  cases  is  that  of  Sooth  v. 
Garelly,  (1  Blatchf.,  247.)  The  design  is  described  as  con- 
sisting of  '  radially  formed  ornaments  on  the  face  of  the 
molds  or  blocks  of  which  the  button  is  formed,  combined 
with  the  mode  of  winding  the  covering  on  the  same,  sub- 
stantially as  set  forth,  whether  the  covering  be  of  one  or 
more  colors.'  The  specification,  in  'substantially'  set- 
ting forth  the  design,  contained  this  language :  '  It  will 
be  obvious  from  the  foregoing  that  the  figures  can  be 
changed  at  pleasure,  by  giving  the  desired  form  to  the 
face  of  the  mold  by  depressions  and  elevations  which 
radiate  from  a  point,  whether  in  the  center  of  the  mold 
or  eccentric  thereto.'  In  the  consideration  of  the  case 


DESIGNS.  433 

by  the  court  no  objection  was  made  to  this  statement  or 
claim.  In  the  case  of  Root  v.  Ball,  (4  McLean,  180,)  the 
learned  judge  instructed  the  jury  that  'if  they  should 
find  that  the  defendant  had  infringed  the  plaintiff's  pat- 
ent by  using  substantially  the  same  device,  as  ornamental, 
on  the  same  part  of  the  stove,  they  would,  of  course,  find 
the  defendant  guilty.  To  infringe  a  patent  right,  it  is 
not  necessary  that  the  thing  patented  should  be  adopted 
in  every  particular;  but  if,  as  in  the  present  case,  the 
design  and  figures  were  substantially  adopted  by  the  de- 
fendants, they  have  infringed  the  plaintiff's  right.  If 
they  adopt  the  same  principle,  the  defendants  are  guilty. 

"'  The  principle  of  a  machine  is  that  combination  of 
mechanical  powers  which  produces  a  certain  result. 
And,  in  a  case  like  the  present,  where  ornaments  are 
used  for  a  stove,  it  is  an  infringement  to  adopt  the  de- 
sign so  as  to  produce  substantially  the  same  appear- 
ance.' 

"It  has  been  the  constant  practice  to  grant  patents  for 
designs  for  fonts  of  type,  for  sets  of  silver  plate,  for  a 
series  of  printers'  flourishes,  and  the  like.  This  class 
of  cases  has  always  passed  without  objection.  Two  other 
cases  which  have  arisen  within  the  office  deserve  notice. 
The  first  was  for  a  series  of  miniature  shoulder-straps, 
with  emblems  denoting  rank,  provided  with  a  pin,  to 
be  worn  under  an  officer's  coat,  upon  his  vest,  or  as  a 
lady's  breastpin.  The  drawing  shows  eight  of  these 
pins,  with  emblems  of  rank,  varying  from  that  of  second 
lieutenant  to  major  general,  and  the  specification,  de- 
scribing the  brooch  for  a  second  lieutenant,  goes  on  to 
say :  *  I  propose  to  introduce  on  some  of  them  the  differ- 
ent ornaments  showing  the  respective  ranks  of  the  army 
37 


434  PROCEDURE  IN  THE  PATENT  OFFICE. 

from  a  major  generalship  to  a  second  lieutenancy.  (See 
figures  2,  3,  4,  5,  6,  7,  8.') 

"  The  second  case  was  that  o£  an  application  for  a  mon- 
ogram visiting-card,  on  which  the  name  was  to  be  in- 
scribed or  printed  in  the  form  of  a  monogram.  The 
applicant  filed  a  drawing,  showing  a  card  upon  which 
was  a  monogram  of  his  own  name.  In  his  specification 
he  gives  certain  rules  for  forming  such  monograms,  and 
then  says:  'It  is  manifest  that  the  form  of  the  letters, 
as  well  as  the  letters  themselves,  can  be  changed  as  re- 
quired by  circumstances  or  the  taste  of  the  individual 
for  whom  the  monogram  is  designed,  and  that  the  gen- 
eral form  and  outline  of  the  monogram  rnay  be  varied, 
and  indeed  must  vary,  to  be  adapted  to  the  particular 
name  it  is  required  to  represent.'  The  claim  was  for 
1  a  monogram  visiting-card,  or  visiting-card  upon  which 
the  name  is  inscribed  or  printed  in  the  form  of  a  mono- 
gram, substantially  as  herein  specified.'  This  applica- 
tion was  rejected  by  the  examiner  and  board  of  exam- 
iners-in-chief,  but  was  allowed  by  the  Commissioner 
upon  appeal. 

"It  is  true  that  before  and  since  this  patent  was  issued 
many  patents  have  been  refused  for  what  I  have  called 
generic  designs.  One  man,  having  designed  a  tack-head 
ornamented  with  radial  lines,  was  compelled  to  take  put 
one  patent  for  his  tack  with  six  radial  lines,  and  another 
for  the  same  tack  with  eight.  There  are  other  instances 
of  like  character,  but  /they  only  serve  to  show  that  the 
practice  of  the  office  has  not  been  uniform,  and  that  the 
true  practice  is  still  to  be  adopted  and  followed. 

"  I  have  no  hesitation  in  saying,  in  view  of  the  prem- 
ises, that  a  valid  patent  may  be  granted  for  a  new  genus 


DESIGNS.  435 

or  class  of  ornaments,  as  well  as  for  specific  ornaments, 
though  I  do  not  doubt  that,  under  the  statute,  every 
species,  variety,  and  individual,  having  distinct  charac- 
teristics, under  such  a  genus,  might  also  he  patented,  the 
patent  being  subordinate  and  tributary  to  that  which 
covered  the  class. 

"  From  the  nature  of  this  subject-matter  there  must 
always  be  more  latitude  in  the  issue  of  patents  for  tri- 
fling changes  of  form  or  outline,  since  it  is  only  neces- 
sary that  such  changes  should  constitute  a  new  design 
to  entitle  them  to  a  patent  of  this  class." 

274.  NEW  SHAPES  AND  CONFIGURATIONS  MAY  BE  PAT- 
ENTED AS  DESIGNS  ON  ACCOUNT  OF  THEIR  UTILITY,  WHEN 
THAT  is  OWING  TO  THEIR  FORM. — "  The  second  question 
relates  to  the  element  of  utility  in  patents  for  designs. 

"Articles  have  been  and  are  being  constantly  patented 
as  designs  which  possess  no  element  of  the  artistic  or 
ornamental,  but  are  valuable  solely  because,  by  a  new 
shape  or  configuration,  they  possess  more  utility  than 
the  prior  forms  of  like  articles. 

"  Of  this  character  are  designs  for  ax-heads,  for  reflect- 
ors, for  lamp-shades,  for  the  soles  of  boots  and  shoes, 
which  have  been  heretofore  patented  as  designs;  and  to 
this  class  might  be  added  with  great  propriety  that  class 
of  so-called '  mechanical '  patents  granted  for  mere  changes 
of  form,  such  as  plowshares,  fan-blowers,  propeller  blades, 
and  others  of  like  character. 

"  When,  therefore,  my  learned  predecessor,  in  Crane's 
case,  added  to  this  number  a  box  so  designed  as  to  hold 
with  convenience  a  set  of  furs,  he  did  but  confirm,  and 
not  alter,  the  practice  of  the  office,  so  far  as  it  can  be 
gleaned  from  the  patented  cases. 


436  PROCEDURE  IN  THE  PATENT  OFFICE. 

"I  am  of  opinion  that  the  class  of  cases  named  in  the 
act  as  arising  from  'new  shape  or  configuration'  in- 
cludes within  it  all  those  new  changes  of  form  which 
involve  increase  of  utility.  This  I  take  to  be  the  spirit 
of  the  decision  in  Wooster  v.  Crane,  (2  Fish.,  583.)  The 
design  was  of  a  reel  in  the  shape  of  a  rhombus.  The 
learned  judge  says:  'In  this  case  the  reel  itself,  as  an 
article  of  manufacture,  is  conceded  to  be  old,  and  not 
the  subject  of  a  patent.  The  shape  applied  to  it  by  the 
complainant  is  also  an  old,  well-known  mathematical 
figure.  Now,  although  it  does  not  appear  that  any  per- 
son ever  before  applied  this  particular  shape  to  this  par- 
ticular article,  I  cannot  think  that  the  act  quoted  above 
was  intended  to  secure  to  the  complainant  an  exclusive 
right  to  use  this  well-known  figure  in  the  manufacture 
of  reels.  The  act,  although  it  does  not  require  utility 
in  order  to  secure  the  benefit  of  its  provisions,  does  re- 
quire that  the  shape  produced  shall  be  the  result  of 
industry,  effort,  genius,  or  expense,  and  must  also,  I 
think,  be  held  to  require  that  the  shape  or  configuration 
sought  to  be  secured  shall  at  least  be  new  and  original 
as  applied  to  articles  of  manufacture.  But  here  the 
shape  is  a  common  one  in  many  articles  of  manufacture, 
and  its  application  to  a  reel  cannot  fairly  be  said  to  be 
the  result  of  industry,  genius,  effort,  and  expense.  No 
advantage  whatever  is  pretended  to  be  derived  from  the 
adoption  of  the  form  selected  by  the  complainant,  except 
the  incidental  one  of  using  it  as  a  trade-mark.  Its  selec- 
tion can  hardly  be  said  to  be  the  result  of  effort  even; 
it  was  simply  an  arbitrary,  chance  selection  of  one  of 
many  well-known  shapes,  all  equally  well  adapted  to  the 
purpose.  To  hold  that  such  an  application  of  a  common 


DESIGNS.  437 

form  can  be  secured  by  letters  patent  would  be  giving 
the  act  of  1861  a  construction  broader  than  I  am  willing 
to  give  it.' 

"It  would  seem  from  this  language  that  if  there  had 
been  'advantage,'  i.  e.,  utility,  in  the  adoption  of  the 
form  of  the  rhombus,  it  would  have  found  more  favor 
in  the  eyes  of  the  court." 

275.  NEW  MODES  OF  OPERATION  OR  CONSTRUCTION  CAN- 
NOT BE  MONOPOLIZED  UNDER  A  PATENT  FOR  A  DESIGN. — 
"  The  third  question  may  be  readily  disposed  of.    Modes 
of  operation  or  construction,  principles  of  action,  com- 
binations to  secure  novelty  or  utility  of  movement,  or 
compositions  of  matter,  can  hardly  be  said  to  be  '  shapes, 
configurations,  or  designs;'  but  where  the  sole  utility  of 
the  new  device  arises  from  its  new  shape  or  configura- 
tion I  think  it  may  fairly  be  included  among  the  subjects 
which  the  act  of  1842  was  designed  to  protect." 

276.  APPLICANT  TO  ELECT  THE  TERM  OF  THE  PATENT  ON 
APPLICATION. — In  the  case  of  Mayo  ex  parte,  (motion,)  the 
Commissioner  says:  "The  applicant  makes  application 
for  a  patent  for  a  design.     He  pays  ten  dollars  into  the 
treasury,  and  adds  to  his  petition  the  following  proviso  : 
'Should  the  Commissioner  be  willing  to  allow  a  patent 
on  this  application,  the  undersigned  wishes  to  pay  into  the 
treasury  the  further  sum  of  twenty  dollars,  and  have  such 
patent  granted  for  fourteen  years,  instead  of  three  and  a 
half  years.' 

"  Section  11  of  the  act  of  March  2, 1861,  provides  that 
upon  application  for  a  patent  for  a  design,  '  the  Commis- 
sioner, on  due  proceedings  had,  may  grant  a  patent  there- 
for, as  in  the  case  now  of  application  for  a  patent,  for  the 
term  of  three  and  one  half  years,  or  for  the  term  of  seven 
37* 


438  PROCEDURE  IN  THE  PATENT  OFFICE. 

years,  or  for  the  term  of  fourteen  years,  as  the  said  ap- 
plicant may  elect  in  his  application:  provided  that  the  fee 
to  be  paid  in  such  application  shall  be  for  the  term  of  three 
years  and  six  months, ten  dollars;  for  seven  years,  fifteen 
dollars;  and  for  fourteen  years,  thirty  dollars.' 

"This  language  contemplates  an  election  to  be  made 
by  the  applicant,  at  the  time  of  his  application,  of  the 
term  for  which  he  desires  his  patent  to  issue,  and  the 
payment  of  a  fee  corresponding  to  that  election.  It  does 
not  contemplate  the  contingency  of  an  application  for 
one  term  and  the  payment  of  one  fee,  and  a  subsequent 
election,  at  the  time  of  issue,  of  another  term  and 
the  payment  of  another  fee.  The  words  are,  *  elect  in 
his  application.'  The  choice  is  to  be  made  there  and 
not  elsewhere  or  otherwise,  and,  being  made,  must  be 
final. 

"I  can  see  that  the  practice  proposed  might  be  desira- 
ble, and  might  result  in  the  granting  of  design  patents  for 
a  longer  period  and  the  receipt  of  a  larger  revenue;  but 
I  have  no  power  to  alter  the  plain  language  of  the  statute, 
or  to  extend  the  time  of  election  beyond  the  time  of 
making  the  application,  for  any  purpose. 

"In  the  present  case  the  applicant  has  paid  a  fee  of  ten 
dollars.  His  patent,  if  granted,  can  issue  only  for  three 
and  a  half  years."  (Commissioners'  Decisions,  February 
23, 1870.) 

277.  No  PROVISION  MADE  FOR  USE  AND  SALE  PRIOR  TO 
APPLICATION. — In  the  case  of  Stuart  and  Bridge  ex  parte, 
(Commissioners' Decisions, February  23, 1870,)  the  Commis- 
sioner says:  "The  applicants,  on  November  3, 1868,  pat- 
ented the  arrangement  of  ovens  and  flue  in  a  cook  stove 
having  a  peculiar  external  conformation.  On  February 


DESIGNS.  439 

5,  1870,  they  filed  an  application  for  a  design  identical 
with  that  shown  in  their  patent  of  1868. 

"  Upon  this  state  of  facts  the  examiner  asks :  1.  Should 
the  application  be  rejected  on  the  patent?  2.  If  so,  can 
the  patentees  reissue  in  two  divisions,  one  of  which  shall 
be  for  the  design  ?  3.  If  so,  what  fees  are  required? 

"Section  11  of  the  act  of  March  2,  1861,  provides  that 
the  new  design,  &c.,  shall  not  be  *  known  or  used  by 
others  before  his,  her,  or  their  invention  or  production 
thereof,  and  prior  to  the  time  of  his,  her,  or  their  appli- 
cation for  a  patent  therefor,'  &c. 

"It  will  be  observed  that  no  provision  is  made  for  use 
or  sale  of  the  invention  prior  to  the  application,  as  in  the 
case  of  other  inventions ;  and  the  reason  of  the  distinc- 
tion is  found  in  the  fact,  that  as  designs  relate  to  form  and 
shape  only,  no  time  is  required  for  experiment  before  the 
application.  At  all  events,  the  language  of  the  statute 
is  plain.  The  design  must  not  have  been  known  or  used 
by  others  prior  to  the  application  of  the  inventor.  It  is 
obvious  that  if  the  design  be  described  in  a  prior  patent, 
granted  either  to  himself  or  others,  it  is  known  to  others 
within  the  meaning  of  the  law.  The  present  application 
must  therefore  be  rejected  upon  the  former  patent." 

278.  A  DESIGN  SHOWN  IN  A  PATENT  FOR  A  MECHANICAL 
INVENTION  is  LOST. — "The  second  question  is,  whether 
the  original  patent  can  be  surrendered  and  reissued  in 
two  divisions,  one  of  which  shall  be  for  the  design? 

"Patents  for  designs  may  be  granted  for  three  and  one 
half,  seven,  and  fourteen  years,  at  the  election  of  the  ap- 
plicant, made  at  the  time  of  application.  Patents  for 
other  inventions  are  granted  for  seventeen  years. 

"  The  patent  granted  to  applicants  in  November,  1868, 


440  PROCEDURE  IN  THE  PATENT  OFFICE. 

•was  of  the  latter   kind,  and  was  granted  for  seventeen 
years. 

"It  is  provided  by  section  13  of  the  act  of  1836  that 
upon  applications  for  reissue  '  it  shall  be  lawful  for  the 
Commissioner,  &c.,  to  cause  a  new  patent  to  be  issued  to 
the  said  inventor  for  the  same  invention  for  the  residue 
of  the  period,  then  unexpired,  for  which  the  original  pat- 
ent was  granted.' 

"This  language  is  explicit,  and  it  is  obvious  that  under 
this  section  any  reissue  of  this  patent,  or  any  division  of 
such  reissue,  must  be  granted  'for  the  residue  of  the 
period  then  unexpired  for  which  the  original  patent  was 
granted;'  that  is,  for  the  residue  of  seventeen  years.  But 
no  patent  for  a  design  can  be  granted  for  seventeen  years, 
or  for  the  residue  of  an  unexpired  period  of  seventeen 
years;  and  this  fact  seems  decisive  of  the  question. 

"The  result  is,  that  an  invention  of  a  design,  if  shown 
in  a  patent  for  a  mechanical  invention,  is  lost,  and  can- 
not be  included  in  a  subsequent  application  and  patent 
for  a  design." 

279.  NUMBER  OF  CLAIMS  ALLOWED. — In  the  case  ofShep- 
pard  ex  parte,  (motion,)  the  Commissioner  says:  "This 
case  is  referred  to  me  by  the  primary  examiner,  upon  the 
following  statement:  'In  this  application  for  patent  for 
design  of  Isaac  A.  Sheppard,  filed  February  24,  1870, 
are  found  two  claims:  one  for  the  central  figure,  (which 
constitutes  the  gist  of  the  case,)  when  cast  on  and  form- 
ing a  part  of  a  stove  plate,  and  the  other  for  the  central 
figure  and  surrounding  ornaments. 

" '  In  dealing  with  this  case,  the  examiner  finds  that  it 
has  not  been  the  usual  practice  of  the  office  to  allow  more 
than  one  claim  in  an  application  for  a  patent  fora  design. 


DESIGNS.  441 

The  reasons  generally  given  to  sustain  this  course  of  ac- 
tion are,  that  a  design  is  a  complete  and  individual  device 
or  ornament,  and  as  such  must  be  exact  and  perfect  in 
every  form,  line,  or  configuration,  the  slightest  devia- 
tion from  what  is  represented  operating  to  make  a  new 
design. 

"'The  law  evidently  makes  no  such  inflexible  rule  of 
official  practice.  In  the  Bartholomew  case  (Commis- 
sioners' Decisions,  1869,  p.  Ill)  it  is  observed  that  a  cer- 
tain reasonable  and  proper  latitude  is  given  in  judging 
what  does  and  what  does  not  breathe  the  spirit  of  the 
invention  in  any  given  case,  and  that  mere  colorable 
variation  is  to  receive  no  more  countenance  or  favor  in 
an  application  for  a  patent  for  a  design  than  it  would  in 
an  application  for  a  mechanical  device. 

'"But  while  the  examiner  is  impressed  with  these 
views,  he  is  unwilling  in  his  first  decisions,  in  applica- 
tions of  the  present  character,  to  overrule,  so  far  as  falls 
within  his  jurisdiction,  the  generally  settled  custom  and 
rule  of  the  office  in  the  above  particular.  He  desires, 
therefore,  to  refer  the  whole  matter  to  the  personal  con- 
sideration of  the  Commissioner,  as  a  question  of  office 
practice,  for  his  decision  or  direction. 

"'L.  DEANE,  Examiner.' 

"I  agree  with  the  examiner  that  there  is  no  provision 
in,  or  fair  construction  of,  the  act  relating  to  letters 
patent  for  designs,  which  forbids  the  union  of  two  or 
more  claims  or  clauses  of  claim  in  a  single  patent.  I  am 
at  a  loss  to  know  upon  what  ground  such  a  construction 
can  be  asserted  or  maintained.  If  the  design  contains 
features  which  are  new,  singly  and  in  combination,  no 
reason  is  known  to  me  why  they  may  not  be  so  claimed. 


442        PROCEDURE  IN  THE  PATENT  OFFICE. 

"  But  the  practice  of  the  office  has  not  been  so  uniformly 
adverse  to  the  granting  of  double  claims  as  seems  to  have 
been  supposed.  On  the  contrary,  letters  patent  for  de- 
signs containing  more  than  one  claim  were  granted  in 
the  years  1855,  1857,  1858,  1859,  1860, -and  1862,  and 
doubtless  in  the  succeeding  years,  if  time  had  permitted 
a  further  examination.  Arnoug  these  special  reference 
is  made  to  the  patent  granted  to  Apollos  Richmond,  in 
1859,  which  contains  one  claim  for  the  configuration  of 
a  stove  plate,  and  another  for  the  ornament  upon  the 
same  plate;  and  to  the  patent  granted  to  Isaac  B.  Wood- 
ruff, in  1862,  for  a  design  for  a  clock  case,  which  con- 
tains one  claim  for  the  configuration  of  the  whole  case, 
and  another  for  a  gilt  frame  forming  a  subordinate  part 
of  the  same  whole. 

"  These  cases  fully  justify  the  claims  presented  in  the 
present  application,  which  may,  therefore,  be  allowed, 
both  upon  reason  and  precedent."  (Commissioners'  De- 
cisions, March  8,  1870.) 

280.  AN  APPLICATION  FOR  PATENT  FOR  MECHANICAL 
INVENTION  CANNOT  BE  CHANGED  INTO  AN  APPLICATION 
FOR  A  DESIGN. — Applicant  filed,  in  September,  1868,  an 
application  for  a  patent  for  "  a  new  and  useful  improve- 
ment in  a  rolled  hollow  hexagonal  column."  He  claimed, 
in  terms,  "  a  hollow  column  of  uniform  thickness,  hex- 
agonal in  both  its  interior  and  exterior,  and  rolled  out 
from  a  solid  or  welded  pile  or  billet  of  iron  or  steel,  with 
a  hexagonal  opening  through  it,  substantially  as  described 
and  represented."  Becoming  satisfied  that  he  could  not 
succeed  in  obtaining  a  patent  for  his  supposed  invention 
in  this  shape,  he  now  proposes  to  change  his  application 
into  one  for  a  patent  for  a  design.  He  asks  to  be  allowed 


DESIGNS.  443 

to  deposit  a  further  fee  of  $15,  making  $30  in  all.  He 
avers  that  it  was  by  inadvertence  and  mistake  that  the 
fee  of  $30  was  not  paid  originally,  and  the  application 
made,  in  terms,  for  a  patent  for  a  design,  tinder  §  11 
of  the  act  of  March  2, 1861.  He  presents  an  amended 
specification,  in  which  the  invention  is  described  as  a 
"  new  and  original  shape  or  configuration  of  steel  or 
wrought  iron  rolled  pipes,  tubes,  or  hollow  shafts  or  pil- 
lars ;"  and  is  claimed  in  the  following  terms :  "  As  a  new 
and  original  shape  or  configuration  of  tubes,  pipes,  hol- 
low shafts,  or  hollow  pillars  or  posts  of  steel,  or  wrought 
or  malleable  iron,  a  machine-rolled  tube  or  pipe  or  hol- 
low shaft  or  hollow  post,  of  uniform  and  symmetrical 
hexagonal  perimeter,  area,  and  cross  section,  in  every 
part  of  its  length,  and  having  no  projections  upon  its 
surface  or  beyond  its  angles. J>  In  support  of  his  prayer 
he  urges  that  the  question  whether  his  patent  be  for  an 
invention  or  design  is  merely  one  of  classification,  which 
is  within  the  discretion  of  the  Commissioner,  and  he  in- 
sists that  this  is  a  case  in  which  that  discretion  ought  to 
be  exercised  in  his  favor. 

Prior  to  the  act  of  August  29,  1842,  there  was  no  law 
which  permitted  the  granting  of  letters  patent  for 
"  shapes,"  "  configurations,"  "  designs,"  "  ornaments," 
"  patterns,"  and  the  like,  which  did  not  involve  some 
mechanical  principle,  or  amount  to  a  new  machine  or 
manufacture  within  the  meaning  of  the  patent  law. 

By  that  act  and  the  act  of  March  2,  1861,  these  sub- 
jects were  made  patentable,  not  by  enlarging  the  scope 
of  the  existing  patent  laws  by  the  addition  of  new  sub- 
jects of  invention,  but  by  independent  legislation,  pro- 
viding for  a  new  class  of  patents,  granted  to  a  different 


444  PROCEDURE  IN  THE  PATENT  OFFICE. 

class  of  persons,  for  a  different  class  of  subjects,  for  dif- 
ferent periods  of  time,  and  upon  the  payment  of  differ- 
ent fees. 

It  is  not  a  matter  of  discretion  with  the  Commissioner 
whether  the  subject  of  an  application  be  a  machine,  or 
a  design  for  a  manufacture;  a  manufacture,  or  a  new  and 
original  shape  or  configuration  of  an  article  of  manu- 
facture; a  composition  of  matter,  or  a  composition  in 
alto  or  basso-relievo ;  an  art,  or  a  pattern,  print,  or  pic- 
ture. It  is  a  matter  of  law,  in  which  a  mistake  is  fatal. 
These  subjects  of  invention  or  contrivance  are  in  truth 
as  distinct  from  each  other  as  either  is  from  a  copy- 
right. 

The  applicant  treats  this  matter  as  if  it  were  simply  a 
matter  of  mistake  as  to  the  term  for  which  he  should 
ha*ve  applied  for  letters  patent ;  but  in  truth  the  error, 
if  error  there  were,  was  in  the  character  of  the  applica- 
tion itself.  He  applied  for  a  patent  for  a  new  product, 
paying  the  fee  for  an  examination,  and  paying  for  a  pat- 
ent for  seventeen  years.  He  described,  not  a  design  for 
a  manufacture,  but  a  manufacture.  He  claimed,  not  a 
new  shape,  but  a  new  thing.  I  know  of  no  discretion 
or  authority  vested  in  the  Commissioner  to  turn  this 
application  into  an  application  for  a  design,  nor  any  pro- 
cess by  which  it  can  be  accomplished  short  of  a  new 
application.  A  single  illustration  will  make  thu  suffi- 
ciently obvious.  An  alien  may  apply  for  letters  patent 
for  an  invention,  but  not  for  a  design,  unless  he  has  re- 
sided in  this  country  for  more  than  one  year  and  made 
oath  of  his  intention  to  become  a  citizen.  It  would  be 
impossible,  therefore,  to  turn  the  application  of  the  alien 
for  an  invention  into  an  application  for  a  design,  how- 


DESIGNS.  445 

ever  clearly  the  subject-matter  might  place  it  in  the  latter 
class  of  subjects. 

I  regard  the  eleventh  section  of  the  act  of  1861  as  dis- 
tinct from  the  remainder  of  the  law  as  if  it  formed  the 
subject  of  a  separate  statute,  and  the  codifiers  of  the  pat- 
ent laws  evidently  so  regarded  it,  for  they  collected  all 
the  matter  relating  to  design  patents  in  a  separate  chap- 
ter. (Boot  v.  Ball,  4  McLean,  180.) 

281.  FORM  OF  PETITION  FOR  LETTERS  PATENT  FOR  A 
DESIGN. — 

To  the  Commissioner  of  Patents: 

Your  petitioner  prays  that  letters  patent  may  be  granted  to  him  for  the 
new  and  original  design  set  forth  in  the  annexed  specification. 

THOMAS  TASTY. 

282.  FORM  OF  SPECIFICATION  FOR  A  DESIGN. — 

I,  Thomas  Tasty,  of  New  Haven,  in  the  county  of  New  Haven,  and 
State  of  Connecticut,  have  invented  and  produced  a  new  and  original  de- 
sign for  carpets,  of  which  the  following  is  a  specification : 

The  nature  of  my  design  is  fully  represented  in  the  accompanying  pho- 
tographic illustration,  to  which  reference  is  made : 

Claim. 
I  claim  as  my  invention  the  design  for  a  carpet,  as  shown. 

THOMAS  TASTY. 
Witness:  OLIVE  OGLE, 

SAMUEL  MERRIWEATHEB. 

283.  FORM  OF  OATH. — 

STATE  OF  NEW  YORK,   1 
County  of  Albany.      J 

Thomas  Tasty,  the  above-named  petitioner,  being  duly  sworn,  (or  affirm- 
ed,) deposes  and  says,  that  he  verily  believes  himself  to  be  the  original  and 
first  inventor  of  the  design  for  carpets  described  in  the  foregoing  specifi- 
cation ;  and  that  he  does  not  know  and  does  not  believe  that  the  same  was 
ever  before  known  or  used;  and  that  he  is  a  citizen  of  the  United  States. 

THOMAS  TASTY. 

Sworn  to  and  subscribed  before  me  this  13th  day  of  March,  1869. 

SIMON  SHALLOW, 

Justice  of  the  Peaec. 
38 


446 


PROCEDURE  IN  THE  PATENT  OFFICE. 


XVII.  Trade-Marks. 


SEO. 

284.  Act  of  July  8,  1870. 

285.  Object  and  effect  of  the  law. 

286.  Patent  Office  requirements. 

287.  Duplicate  copies. 


SEC. 

288.  Record  of  assignment. 

289.  Form  of  petition  and  oath. 

290.  Form  of  transfer. 

291.  Form  of  certificate. 


284.  ACT  OF  JULY  8, 1870. — For  the  provisions  of  the  act 
of  July  8, 1870,  concerning  trade-marks,  see  Part  I,  p.  36. 

285.  OBJECT  AND  EFFECT  OF  THE  LAW. — In  the  case  of 
King  ex  par  te,  (Commissioners' Decisions,  September  19, 1870,) 
the  Commissioner  says :  "Applicant  tenders  $30  and  asks 
for  a  patent  for  fourteen  years  for  a  '  design  for  a  trade- 
mark.'   He  says:  '  The  distinctive  features  of  my  design 
consist  of  my  portrait,  placed  in  the  center  lengthwise,  and 
surmounted  by  the  British  coat-of-arms,  about  which  is 
arranged,  in  a  semicircular  form,  the  words  "  King's  Sauce 
Royal."  Upon  the  left  of  my  portrait  is  a  shield  or  tablet, 
containing  the   words  "  Shake  well  the  bottle  before 
using,"  and  upon  the  opposite  side  a  similar  tablet,  con- 
taining the  words  "None  genuine  without  my  portrait 
and  signature,  W.  King,"  said  signature  being  a  fac  simile 
of  my  handwriting.     Although  the  above-named  tablets 
are  used,  they  are  not   considered  as  essential  to  the 
design,  and  may  be  omitted  if  desired. 

"'Having  thus  fully  set  forth  the  nature  and  merits  of 
my  invention,  what  I  claim  as  new,  is:  The  hereinbe- 
fore described  design,  substantially  as  shown.' 

"  Prior  to  the  act  of  July  8,  1870,  no  protection  was 
afforded  by  statute  for  trade-marks  eo  nomine.  They  were 
left  to  the  protection  of  the  common  law,  except  where 
the  design  was  of  such  character  as  to  fall  properly  within 


TRADE-MARKS.  447 

the  subjects  patentable  as  designs.  In  such  case  they 
have  been  patented,  usually  with  the  addition  of  the 
words  'for  a  trade-mark.'  These  words  were, however, 
merely  descriptive,  and  carried  with  them  no  guaranty 
as  to  the  use  of  the  trade-mark.  In  other  words,  if  goods 
had  been  sold  with  such  a  design  affixed,  the  only  pen- 
alty that  could  have  been  recovered,  under  the  statute, 
would  have  been  for  the  infringement  of  the  design  as 
an  ornament,  and  no  recovery  could  have  been  had  of 
the  damage  resulting  to  the  injury  to  the  trade  of  the 
manufacturer  by  a  violation  of  his  trade-mark  in  the  sale 
of  the  articles  to  which  it  was  attached. 

^ 

"  It  was  to  remedy  this  evil,  and  to  give  promptly,  by 
statute,  that  protection  to  trade-marks  which  the  common 
law  tardily  afforded,  that  Congress  passed  so  much  of 
the  act  of  July  8,  1870,  as  relates  to  this  subject.  By  the 
provisions  of  that  act,  a  trade-mark,  whether  old  or  new, 
may  be  registered  in  the  Patent  Office  by  its  owner,  and 
by  the  payment  of  $25  protection  is  afforded  for  thirty 
years.  As  this  protection  is  more  ample,  and  covers 
more  than  double  the  time  for  less  money,  it  is  difficult 
to  see  why  applicant,  or  any  one  else,  should  now  seek 
a  design  patent  for  a  trade-mark.  The  folly  of  the  appli- 
cation does  not,  however,  relieve  me  from  the  necessity 
of  deciding  upon  its  legality. 

"  The  only  clause  of  the  designs  act  under  which  trade- 
marks can  possibly  fall  is  that  which  enumerates  '  any 
new  and  original  impression,  ornament,  pattern,  print,  or 
picture,  to  be  printed,  painted,  cast,  or  otherwise  placed 
on  or  worked  into  any  article  of  manufacture.'  This 
manifestly  refers  to  the  external  ornamentation  of  man- 
ufactured articles,  and  it  requires,  first,  a  specific  article 


448  PROCEDURE  IN  THE  PATENT  OFFICE. 

of  manufacture  to  be  ornamented;  and,  second,  an  im- 
pression, ornament,  pattern,  print,  or  picture  to  be  placed 
upon  it.  It  was  only  by  a  forced  construction  of  this 
clause  that  designs  which  were  to  be  used  only  as  trade- 
marks or  selling  labels  could  be  included  within  it. 

"But  the  subject  is  relieved  of  all  difficulty  by  §  77 
of  the  late  statute.  It  is  there  enacted  '  that  any  per- 
son, corporation,  &c.,  who  are  entitled  to  the  exclusive 
use  of  any  lawful  trade-mark,  or  who  intended  to  adopt 
and  use  any  trade-mark,  for  exclusive  use  within  the 
United  States,  may  obtain  'protection  for  such  law/id  trade- 
mark by  complying  with  the  following  provisions.'  This 
provision,  by  prescribing  the  statutory  mode  of  obtain- 
ing protection  for  a  trade-mark,  excludes  all  other  modes 
not  expressly  provided  for,  and  operates  as  a  construc- 
tion of  §  71,  in  excluding  trade-marks  from  the  list  of 
subjects  intended  to  be  protected  as  designs. 

"In  accordance  with  this  opinion,  the  present  applica- 
tion, and  all  others  which  are  intended  to  cover  trade- 
marks, or  '  designs  for  trade-marks,'  must  be  presented 
under  the  provisions  of  §§  77-84  of  the  act  of  July  8, 
1870,  and  not  otherwise." 

286.  PATENT  OFFICE  REQUIREMENTS. — As  to  who  are 
entitled  to  trade-marks,  requirements  of  the  law,  &c., 
see  Part  I,  page  36,  et  seq. 

Under  the  provisions  of  §§  77  and  81  of  the  act  author- 
izing the  Commissioner  to  make  rules,  &c.,  the  follow- 
ing requirements,  in  addition  to  those  prescribed  by 
law,  have  been  established: 

287.  DUPLICATE  COPIES. — Five  duplicate  copies  of  the 
proposed  trade-mark,  in  addition  to  the  one  accompany- 
ing the  statement  and  oath  of  applicant,  must  be  depes- 


TRADE-MARKS.  449 

ited  with  each  application.  Certified  copies  will  be  fur- 
nished at  the  usual  rates.  (Patent  Office  Rules,  July, 
1870.) 

288.  ASSIGNMENT  OF  TRADE-MARK  TO  BE  RECORDED 
SIXTY  DAYS  AFTER  ITS  EXECUTION. — The  right  to  the  use 
of  any  trade-mark  is  assignable  by  any  instrument  of 
writing,  and  such  assignment  must  be  recorded  in  the 
Patent  Office  within  sixty  days  after  its  execution.     The 
fees  will  be  the  same  as  are  prescribed  for  recording 
assignments  of  patents.     (/6.) 

289.  FORM  OF  PETITION  AND  OATH. — 

To  the  Commissioner  of  Patents: 

Your  petitioners,  Martin  Scott  and  Henry  Newman,  partners  under  the 
firm  name  of  Scott  &  Newman,  residing  in  Peacedale,  Washington  county, 
Rhode  Island,  and  engaged  in  the  manufacture  and  sale  of  cotton  sheet- 
ings at  said  Peacedale,  represent  that  they  have  used  for  ten  years  last 
past,  are  now  using,  and  have  the  right  to  use,  a  trade-mark  for  said 
sheetings,  of  which  the  design  shown  in  the  annexed  drawing  is  a 
true  copy  ;  which  trade-mark  has  heen  printed  in  blue  ink  upon  the  out- 
side of  each  piece  of  sheetings.  They  further  represent  that  no  other  per- 
son, firm,  or  corporation  has  a  right  to  the  use  of  said  trade-mark,  or  of 
one  substantially  the  same.  They  therefore  pray  that  said  trade-mark 
may  be  registered  and  recorded  in  the  Patent  Office  according  to  law, 
they  having  paid  into  the  treasury  of  the  United  States  the  sum  of  twenty- 
five  dollars,  and  otherwise  complied  with  the  regulations  in  such  case  made 
and  provided.  MARTIN  SCOTT. 

HENRT  NEWMAH. 

STATE  OF  RHODE  ISLAND,  j 
County  of  Washington,    ) 

Martin  Scott  and  Henry  Newman,  being  sworn,  make  oath  and  say,  that 
the  foregoing  statement  by  them  subscribed  is  true  in  substance  and  in 
fact,  as  they  verily  believe.  MARTIN  SCOTT. 

HENRY  NEWMAN. 

Sworu  to  and  subscribed  before  me  this  15th  day  of  July,  1870. 

JOHN  JUBAT, 

Justice  of  the  Peace. 
38* 


450  PROCEDURE  IN  THE  PATENT  OFFICE. 

290.  FORM  OF  TRANSFER  OF  A  TRADE-MARK. — 

We,  Jotham  Mills  and  Abner  Clark,  of  Keokuk,  Iowa,  partners  under 
the  firm  name  of  Mills  &  Clark,  in  consideration  of  five  hundred  dollars, 
to  us  paid  by  Jarvis  Case,  of  the  same  place,  do  hereby  sell,  assign,  and 
transfer  to  the  said  Jarvis  Case  and  his  assigns  the  exclusive  right  to  use, 
in  the  manufacture  and  sale  of  stoves,  a  certain  trade-mark  for  stoves 
deposited  by  us  in  the  United  States  Patent  Office,  and  recorded  therein 
July  15,  1870;  the  same  to  be  held,  enjoyed,  and  used  by  the  said  Jarvis 
Case  as  fully  and  entirely  as  the  same  would  have  been  held  and  enjoyed 
by  us  if  this  grant  had  not  been  made. 

Witness  our  hands  this  20th  day  of  July,  1870. 

JOTHAM  MILLS. 
ABNEB  CLABK. 

291.  FORM  OF  CERTIFICATE. — 

UNITED  STATES  PATENT  OFFICE. 
To  all  whom  it  may  concern  : 

THIS  is  TO  CERTIFY,  That did,  on  the day  of , 

187-,  deposit  in  the  United  States  Patent  Office  for  registration  a  certain 

trade-mark  for ,  whereof  a  copy  is  hereto  annexed;  that 

filed  therewith  the  annexed  statement;  and,  having  paid  into  the  Treasury 
of  the  United  States  the  sum  of  twenty-five  dollars,  and  otherwise  com- 
plied with  the  acts  of  Congress  in  such  case  made  and  provided,  the  said 
trade-mark  has  been  duly  registered  and  recorded  in  the  said  Patent  Office, 

and  will  remain  in  force  for  thirty  years  from  the day  of , 

one  thousand  eight  hundred  and  seventy. 

In  testimony  whereof  I  have  caused  the  seal  of  the  Patent  Office  to  be 

hereunto  affixed  this day  of ,  187-,  and  of  the  independence 

of  the  United  States  the  ninety . , 

[SEAL.]  Commissioner  of  Patents. 


XVIII.  Interference. 


SEC. 

292.  Daty  of  Commissioner. 

293.  Patent  to  issue  to  prior  inventor. 

294.  Definition  of  an  interference. 

295.  When  declared. 

296.  When  one  of  the  parties  has 

obtained  a  patent. 


SEC. 

297.  Each  party  to  file  statement 

under  oath. 

298.  Adjudication  by  default. 

299.  When  case  is  closed  and  may 

be  set  for  hearing. 

300.  Appeal  in  interference  cases. 


INTERFERENCE. 


451 


SEC. 

301.  Notice  of  declaration  of  inter- 

ference. 

302.  Notice  by  publication. 

303.  First  applicant  presumed  to  be 

the  prior  inventor. 

304.  Assignment  of  time  for  taking 

testimony. 

305.  Postponement  of  hearing. 

306.  Affidavit  required. 

307.  Examiner  in  charge  of  inter- 

ferences. 

308.  When  an  interference  will  be 

dissolved. 

309.  Primary  examiner  cannot  dis- 

solve an  interference. 


SEC. 

310.  Two  years'  public  use. 

311.  When  a  second  interference  will 

be  declared. 

312.  Withdrawal  of  claims  which  do 

not  interfere. 

313.  No  amendments  allowed. 

314.  Withdrawal  after  decision. 

315.  Interference  may  be  opened  to 

admit  new  parties. 

316.  Abandonment  in  interference 

cases. 

317.  Classes    into  which    cases  of 

interference  may  be   divid- 
ed. 


292.  DUTY  OF  COMMISSIONER. — Whenever  an  applica- 
tion is  made  for  a  patent  which,  in  the  opinion  of  the 
Commissioner,  would  interfere  with  any  pending  appli- 
cation, or  with  any  unexpired  patent,  he  shall  give  notice 
thereof  to  the  applicants,  or  applicant  and  patentee,  as 
the  case  may  be,  and  shall  direct  the  primary  examiner 
to  proceed  to  determine  the  question  of  priority  of  in- 
vention.    (Act  of  July  8,  1870,  §  42.) 

293.  PATENT  TO  ISSUE  TO  PRIOR  INVENTOR  UNLESS  AP- 
PEAL is  TAKEN. — The  Commissioner  may  issue  a  patent 
to  the  party  who  shall  be  adjudged  the  prior  inventor, 
unless  the  adverse  party  shall  appeal  from  the  decision 
of  the  primary  examiner,  or  of  the  board  of  examiners- 
in-chief,  as  the  case  may  be,  within  some  time,  not  less 
than  twenty  days,  as  the  Commissioner  shall  prescribe. 
(J6.) 

294.  DEFINITION  OF  AN  "INTERFERENCE." — An  "inter- 
ference" is  an  interlocutory  proceeding  for  the  purpose 


452  PROCEDURE  IN  THE  PATENT  OFFICE. 

of  determining  which  of  two  or  more  persons,  each  or 
either  of  whom  claims  to  be  the  first  inventor  of  a  given 
device  or  combination,  really  made  the  invention  first. 
(Patent  Office  Bides,  July,  1870.) 

295.  WHEN  AN  INTERFERENCE  WILL  BE  DECLARED. — 
An  interference  will  be  declared  in  the  following  cases: 

First.  "When  the  parties  have  pending  applications 
before  the  ofiice  at  the  same  time,  both  or  all  the  parties 
claiming  to  be  the  inventor  of  the  same  thing. 

Second.  When  an  applicant,  having  been  rejected 
upon  the  prior  unexpired  patent  or  the  prior  application 
of  another,  claims  to  have  made  the  invention  before 
the  prior  applicant  or  patentee. 

Third.  When  an  invention  is  claimed  in  a  renewed 
application  which  is  shown  or  claimed  in  an  application 
filed  or  unexpired  patent  granted  prior  to  the  filing  of 
such  renewed  application. 

Fourth.  When  an  applicant  for  a  reissue  embraces  in 
his  amended  specification  any  new  or  additional  descrip- 
tion of  his  invention,  or  enlarges  his  claim,  or  makes  a 
new  one,  and  thereby  includes  therein  anything  which 
has  been  claimed  in  any  patent  granted  subsequent  to 
the  date  of  his  original  application,  as  the  invention  of 
another  person,  an  interference  will  be  declared  between 
the  application  and  any  such  unexpired  patent  or  pend- 
ing application.  If  the  reissue  application  claims  only 
what  was  granted  in  the  original  patent,  it  may  be  put 
into  interference  with  any  pending  application  in  which 
the  same  thing  is  shown ;  provided  the  later  applicant 
claims  to  be  the  prior  inventor  and  is  not  barred  a  patent 
by  public  use  or  abandonment. 

Fifth.  When  an  application  is  found  to  conflict  with 


INTERFERENCE.  453 

a  caveat,  the  caveator  is  allowed  a  period  of  three  months 
within  which  to  present  an  application,  when  an  inter- 
ference may  be  declared. 

Sixth.  The  office  reserves  to  itself  the  right,  when  two 
applications  are  pending  at  the  same  time,  in  one  of 
which  a  device  may  be  described  which  is  claimed  in 
the  other,  to  declare  an  interference  to  determine  with 
whom  is  priority  of  invention,  without  reference  to  the 
order  in  which  such  applications  may  have  been  filed. 
(Ib.) 

The  interference  must  be  in  respect  to  patentable 
matters,  (Sain  v.  Morse,  MS.  Appeal  Cases,  1849,)  and 
there  can  be  no  interference  between  applications  unless 
there  is  a  substantial  identity  of  the  things  for  which  a 
patent  is  sought;  if  there  are  material  and  substantial 
differences  between  the  two  things,  there  can  be  no  iden- 
tity and  no  interference,  (Tyson  v.  Rankin,  ib.,  1853;) 
and  where  two  separate  applications  for  patents  for  im- 
provements upon  the  same  thing  were  generally  similar 
in  form,  and  in  some  respects  nearly  identical  in  con- 
struction, but  the  principle,  object,  and  design  of  each 
was  unlike  that  of  the  other,  and  the  end  to  be  attained 
or  effect  intended  was  wholly  different,  it  was  held,  not- 
withstanding their  general  similarity,  that  the  two  inven- 
tions were  not  substantially  tlte  same,  and  that  there 
was  no  interference  between  them.  (O'Reilly  v.  Smith, 
ib.,  1853.)  A  patentable  improvement  is  not  an  interfer- 
ence. (Bain  v.  Morse,  ib.,  1849.) 

An  interference  may  be  declared  between  two  applica- 
tions, if  the  same  invention  is  substantially  described  in 
each  of  them,  though  the  claim  in  one  case  may  not  be 
as  broad  as  the  specification.  The  oath  as  to  invention 


454  PROCEDURE  IN  THE  PATENT  OFFICE. 

is  to  be  construed  as  extending  to  all  described  in  the 
schedule,  (King  v.  Gedney,  ib.,  1856;)  and  where  a  broad 
claim  covers  what  is  embraced  in  a  special  or  restricted 
claim  made  by  another  party,  a  conflict  exists  which 
must  be  determined  by  an  interference.  (Sherwood  v. 
Searls,  Commissioners'  Decisions,  1869,  p.  112.) 

A  subsequent  application  which  claims  a  device  which 
is  shown  in  a  prior  patent  interferes  with  that  patent 
whether  the  device  be  or  be  not  claimed  in  the  patent. 
In  the  first  place,  if  the  applicant  succeeds,  it  follows, 
that  the  patentee  can  no  longer  use  the  whole  of  that 
which  he  has  described  in  his  patent;  and,  in  the  second, 
if  the  applicant  makes  claim  to  a  device  which  is  shown 
in  an  earlier  patent,  the  office  can  grant  no  patent  to 
him;  for, prima  facie,  he  is  not  the  first,  but  the  second 
inventor.  He  must  prove  priority,  and  the  necessity  for 
proof  creates  the  necessity  for  the  interference.  ( Wright 
ex  parte,  Commissioners'  Decisions,  June  13,  1870.) 

An  interference  is  properly  declared  where  no  claim 
can  be  made  upon  the  device  of  the  party  first  in  the 
office  which  would  not  be  embraced  in  that  of  the  other 
partv.  (Bachelor  v.  Porter,  Commissioners'  Decisions,  1869, 
p.  64.) 

296.  WHERE  ONE  OF  THE  PARTIES  HAS  OBTAINED  A  PAT- 
ENT.— The  fact  that  one  of  the  parties  has  already  obtained 
a  patent  will  not  prevent  an  interference;  for,  although 
the  Commissioner  has  no  power  to  cancel  a  patent  already 
issued,  he  may,  if  he  finds  that  another  person  was  the 
prior  inventor,  give  him  also  a  patent,  and  thus  place 
them  on  an  equal  footing  before  the  courts  and  the  pub- 
lic. (Patent  Office  Rules,  July,  1870.) 

Thus,  in  the  matter  of  the  interference  between  the 


INTERFERENCE.  455 

application  of  J.  C.  Stoddard  and  the  patent  of  II.  A. 
Streeter  for  the  same  invention,  the  Commissioner  says : 

"  If  these  two  cases  were  before  me  in  the  form  of 
applications,  I  should  have  no  hesitation  in  refusing  a 
patent  to  both.  Unfortunately,  Streeter  has  received  a 
patent;  and  the  question  now  before  me  is,  whether  one 
should  now  be  granted  to  Stoddard. 

"  Aside  from  the  substantial  existence  of  the  inventions 
claimed  by  Streeter  in  the  prior  patents  of  Stoddard,  I 
find  Stoddard  to  be  the  prior  inventor  of  the  precise 
'arrangements'  claimed  by  Streeter.  He  made  a  ma- 
chine in  1866,  which  was  seen  by  several  persons,  and 
the  existence  of  which  is  fully  proved.  He  swears  to  the 
making  of  another  in  1868,  at  Dayton,  Ohio,  and  this  is 
not  contradicted.  He  preferred,  in  his  earlier  patent,  to 
locate  the  rake  in  front  of  the  axle,  because  he  thought 
that  when  the  farmers  fully  understood  it  they  would 
rather  use  it  in  that  way,  and  he  wished  it  to  be  fully 
tried.  The  other  form  was  made,  explained  to  others, 
and  held  in  reserve.  I  have  already  held  that  it  involved 
no  invention  to  pass  from  the  one  to  the  other.  Never- 
theless, having  issued  a  patent  to  Streeter,  it  is  probably 
no  more  than  just  to  issue  a  like  grant  to  Stoddard,  the 
real  inventor  of  both  forms,  in  order  that  he  may  be  able 
to  present  to  the  public  a  grant  as  complete  in  the  form 
of  its  claims  as  that  which  has  inadvertently  been  made  to 
his  competitor.  The  decision  of  the  board  of  examiners- 
in-chief,  awarding  priority  of  invention  to  Stoddard,  is 
affirmed."  (Commissioners'  Decisions,  September  7,  1870.) 

The  case  of  Luther  0.  Crocker  ex  porte  presents  inter- 
esting questions  for  consideration.  Mr.  Justice  Fisher 
says:  "In  April,  1867,  a  patent  was  granted  tcr  said 


456  PROCEDURE  IN  THE  PATENT  OFFICE. 

Luther  0.  Crocker  and  one  George  T.  Field,  they 
having  made  an  application  therefor  as  joint  inventors. 
After  this  patent  had  been  issued,  it  appears  that  these 
patentees,  upon  consultation  with  their  counsel,  discov- 
ered that  they  were  really  not  joint  inventors  of  the  de- 
vice, but  that  Luther  0.  Crocker  alone  was  the  inventor. 
How  this  misapprehension  occurred  does  not  appear; 
but  that  Crocker  was  and  is  the  sole  inventor  seems  to 
be  admitted  by  Field  and  also  by  the  Patent  Office.  That 
the  mistake  honestly  occurred  does  not  seem  to  be  doubted, 
as  there  is  no  suggestion  from  the  office  that  there  was 
any  fraud  practiced  by  either  Field  or  Crocker.  I  there- 
fore assume  that  the  mistake,  in  supposing  that  they  were 
joint  inventors,  was  honestly  made.  Finding  upon  con- 
sultation with  their  counsel  that  they  were  laboring  under 
this  misapprehension,  they  set  about  correcting  the  error. 
To  this  end  Crocker  filed  an  application  in  his  own  name 
only  for  a  patent  for  the  same  invention,  making  the  oath 
of  course  that  he  was  the  sole  inventor.  Soon  after  fil- 
ing this  separate  application  he  also  filed  an  affidavit  made 
by  Field,  setting  forth  the  fact  that  the  former  patent  had 
been  erroneously  issued  to  them  as  joint  inventors,  and 
that,  since  the  explanation  given  them  by  their  counselor, 
he  was  satisfied  that  Crocker  alone  was  the  sole  inventor, 
and  renouncing  any  claim  as  inventor  himself,  or  as  a 
joint  inventor  with  Crocker. 

"The  question  then  arose  in  the  office  as  to  how  the 
error  could  be  cured,  and  Crocker  receive  a  patent  as 
sole  inventor.  All  agreed  that  an  error  had  been  made, 
and  it  seems  also  to  be  conceded  that  it  was  made  not 
through  any  fault  in  the  office,  but  through  the  inno- 
cent ignorance  of  Crocker  and  Field.  The  applicant 


INTERFERENCE.  457 

demanded  a  new  original  patent  to  be  issued  to  him. 
solely,  without  any  offer  on  his  own  behalf  or  of  Crocker 
and  Field  to  surrender  the  joint  patent  for  cancellation. 
But  the  examiner  in  charge  decided  that  the  'remedy  is 
not  the  issue  of  a  new  patent,  but  that  the  party  in  ami- 
cable error  should  assign  all  his  interest,  real  or  apparent, 
to  the  applicant,  who  could  then  properly  control  a  reis- 
sue ;'  and  he  postponed  further  action  in  the  case,  in  order, 
I  suppose,  that  such  assignment  might  be  made,  and  a 
reissue  granted  to  Crocker  only. 

"  To  this  Crocker,  the  applicant,  objected,  and  insisted 
that  he  was  entitled  to  be  put  in  interference  with  the  pat- 
ent issued  to  Crocker  and  Field  jointly,  and  himself  de- 
clared the  prior  and  sole  inventor,  on  the  sworn  acknowl- 
edgments of  himself  and  Field.  The  examiner,  after  a 
consideration  of  the  matter,  adhered  to  his  original  de- 
cision, and  held  that  'the  applicant  is  the  party  in  error, 
and  cannot,  through  such  error,  force  the  office  into  the 
dilemma  of  either  deliberately  granting  two  patents  for 
the  same  identical  invention,  or  going  through  the  form 
of  a  "  quasi  interference" '  The  applicant  still  pressing  for 
his  new  patent,  the  examiner  finally  rejected  the  appli- 
cation on  the  3d  of  April,  1868,  in  order,  as  he  says,  'to 
put  the  case  in  process  to  become  subject  to  appeal  upon 
the  question  at  issue.'  Accordingly  Crocker  made  his 
appeal  to  the  board  of  examiners-in-chief.  This  board 
decided  that  '  the  patent  issued  to  Crocker  and  Field  is 
void  ab  initio,  because  it  was  issued  to  two  parties  as  joint 
inventors,  whereas  Crocker  was  the  sole  inventor ;  and 
that  thus,  being  void  ab  initio,  an  applicant  for  a  patent 
cannot  be  put  in  interference  with  a  patent  which  does 
not  exist,  and,  for  the  same  reason,  there  can  be  no  party 
39 


458  PKOCEDURE  IN  THE  PATENT  OFFICE. 

to  assign  his  interest,  for  he  can  have  no  interest  to  assign 
in  a  void  patent.'  From  their  reasoning  it  would  seem 
that  the  applicant,  Crocker,  had  no  remedy  either  by  a 
reissue  or  new  original  sole  patent.  Having  pronounced 
the  joint  patent  void,  and  treating  it  as  no  patent,  we 
could  hardly  suppose  it  would  support  a  reissue,  any 
more  than  it  would  support  an  interference,  which  they 
pronounce  impossible,  because,  as  they  say,  the  joint 
patent  had  actually  no  existence,  and  therefore  there  is 
no  patent  for  Crocker's  application  to  be  put  in  inter- 
ference with.  They  strangely  enough,  however,  agree 
with  the  examiner,  that  the  application  should  be  re- 
jected, though  they  'do  not  concur  with  him  in  the 
reasons  which  he  has  given  for  his  decision  or  the  rem- 
edy he  suggests,'  to  wit,  the  assignment  by  Crocker  and 
Field  of  the  joint  patent  to  Crocker,  the  surrender  of 
the  same  by  Crocker,  and  a  reissue  upon  that  surrender. 
They  suggest,  however,  that  the  remedy  of  the  applicant 
is  in  the  surrender  of  the  invalid  patent, '  and  in  a  reissue 
or  granting  of  a  new  patent  to  the  inventor  (Crocker)  for 
the  residue  of  the  period  unexpired.'  So  that,  although 
they  say  they  do  not  concur  in  the  remedy  suggested  by 
the  examiner,  they  really  do  concur  in  it.  The  examiner 
suggests  a  reissue  as  the  remedy ;  the  board  suggests  the 
same  remedy.  They  only,  in  fact,  differ  with  him  as  to 
how  the  reissue  is  to  be  had.  The  examiner  says  it  mav 

•/  */ 

be  had  by  an  assignment,  made  to  Crocker  alone  from 
Crocker  and  Field,  and  then  a  surrender  by  Crocker. 
The  board  say  no  assignment  can  be  made,  because,  the 
joint  patent  being  void  ab  initio,  there  is  nothing  to 
assign.  But  it  would  seem  that  if  there  is  nothing  to 
assign,  there  can  also  be  nothing  to  surrender ;  and,  be- 


INTERFERENCE.  459 

sides,  if,  while  the  old  patent  is  not  assignable,  it  may 
still  be  surrenderable,  it  would  seem  that  Crocker  alone 
cannot  surrender  it.  The  surrender  would  have  to  be 
made  by  both  Crocker  and  Field;  and,  then,  what  if 
Field  were  unwilling  to  surrender  ?  How  could  Crocker 
compel  him? 

"  The  board  suggests  the  remedy  of  reissue  according 
to  the  provisions  of  section  13  of  the  act  of  1836,  which 
they  quote  in  their  opinion,  and  which  I  quote  literally, 
except  that,  supposing  it  applies  to  cases  of  joint  pat- 
entees or  inventors,  I  substitute  the  plural  for  the  sin- 
gular number,  in  order  to  show  that  the  provisions  of 
that  section  could  not  possibly  have  been  enacted  to 
meet  cases  of  the  kind  now  under  consideration.  With 
such  alterations  the  section  would  read  thus:  '"When- 
ever any  patent  which  has  been  heretofore  granted,  kor 
which  shall  hereafter  be  granted,  shall  be  inoperative 
or  invalid  by  reason  of  a  defective  or  insufficient  descrip- 
tion or  specification,  or  by  reason  of  the  patentee(s) 
claiming  in  his  (their)  specification  as  his  (their)  own  in- 
vention more  than  he  (they)  had  or  should  have  a  right 
to  claim  as  new,  if  the  error  has  or  shall  have  arisen 
by  inadvertency,  accident,  or  mistake,  and  without  any 
fraudulent  or  deceptive  intention,  it  shall  be  lawful  for 
the  Commissioner,  upon  the  surrender  to  him  of  such 
patent  and  the  payment  of  a  further  duty  of  $30,  to  cause 
a  new  patent  to  be  issued  to  the  said  inventor(s),'  &c. 
Now,  under  this  section,  as  I  interpret  it,  if  this  old  joint 
patent  be  surrendered,  the  reissued  patent  based  upon  it 
must  issue  to  the  same  or  'said'  patentees  (or  to  the 
assignee  of  the  same  patentees)  who  took  out  the  original 
patent  upon  which  the  reissue  is  based,  so  that  a  reissue 


460  PROCEDURE  IN  THE  PATENT  OFFICE. 

would  be  no  more  valid  or  operative  than  the  original, 
the  place  of  which  it  is  to  take.  In  my  judgment,  this 
thirteenth  section  was  not  intended  to  correct  a  mistake 
as  to  the  parties  who  take  out  a  patent  under  the  honest 
but  erroneous  impression  that  they  are  joint  inventors. 
It  is  simply  intended  to  correct  errors  which  might  be 
made  in  the  claims  of  the  party  taking  out  a  patent  by 
reason  of  the  insufficient  description  of  the  machine  or 
thing  invented,  and  not  to  correct  the  errors  of  parties 
who  have  mistakenly  supposed  themselves  to  be  joint 
inventors.  It  was  intended  to  enable  an  inventor  who 
had,  on  the  one  hand,  claimed  too  much,  by  describing 
his  claim  too  broadly,  or,  on  the  other,  by  failing  to  de- 
scribe it  broadly  enough  to  cover  all  his  invention,  to 
cure  these  errors,  and  not  to  cure  errors  as  to  the  iden- 
tity of  the  inventor.  I  am,  therefore,  clear  in  my  con- 
viction that  reissue  is  not  the  remedy  which  the  patent 
laws  provide  for  the  error  committed  in  this  case. 

"  The  question  then  recurs,  can  the  mistake  be  cured  by 
the  mode  suggested  by  the  applicant  ?  Can  a  new  original 
patent  be  granted  to  him  upon  a  declaration  of  interfer- 
ence between  his  application  and  the  patent  heretofore 
granted  to  Crocker  and  Field  ?  I  think  this  is  the  proper 
and  only  remedy,  except,  perhaps, by  proceedingin  equity 
under  the  sixteenth  section  of  the  act  of  July  4,  1836. 

"It  is  true  that  Commissioner  Foote,  in  his  opinion  af- 
firming the  decision  of  the  board  of  examiners-in-chief, 
says  that  'the  Patent  Office  has  no  authority  to  issue  two 
patents  for  the  same  invention — a  joint  patent  to  two 
parties  and  a  separate  one  to  one  of  them.'  Let  us  see, 
first,  whether  such  authority  does  not  exist  to  issue  two 
patents  for  the  same  invention.  There  can  be  no  doubt 


INTERFERENCE.  461 

that  such  authority  does  exist.  Let  us  suppose  that  John 
Doe  applies  for  and  receives  a  patent  for  an  improved 
ticket-cutter,  having  invented  it  six  months  before  he 
makes  his  application.  Richard  Roe,  having  invented  the 
same  thing  precisely,  six  months  before  John  Doe  in- 
vented it,  comes  in  with  his  application  within  two  years 
from  the  time  of  the  making  his  invention.  The  office 
would  not  hesitate  at  once  to  declare  an  interference  be- 
tween the  patentee  and  the  applicant;  and  if,  upon  the 
hearing,  it  should  appear  that  Roe  was  the  prior  inventor, 
and  was  without  laches,  he  also  would  receive  his  patent 
for  the  same  invention,  notwithstanding  Doe  had  received 
one  before. 

"  The  whole  law  on  this  subject  of  interference  looks  to 
nothing  other  than  granting  two  patents  for  the  same  in- 
vention. It  is  done  every  month  almost,  if  not  every 
week;  and  neither  party  is  concluded  by  the  action  of 
the  court  in  granting  a  patent  to  the  other,  but  each  is 
free  to  fight  out  his  claim  of  priority  before  the  courts. 
But  the  trouble  of  granting  two  patents  in  this  case,  a 
joint  and  separate  one,  seems  to  be  two-fold :  First,  that 
Luther  O.  Crocker  was  one  of  the  persons  to  whom  the 
joint  patent  was  issued,  and  therefore  he  cannot  be  put 
in  interference  with  himself  and  another  as  joint  pat- 
entees; and,  second,  that  because  Field  had  admitted 
away  his  joint  inventorship  before  the  declaration  of  in- 
terference, therefore  the  interference,  if  declared,  would 
merely  be  a  quasi  interference.  There  are  no  difficulties 
at  all.  If  another  than  Crocker  had  made  an  applica- 
tion for  the  patent  he  now  seeks,  a  declaration  of  inter- 
ference would  have  been  made  at  oiice.  Then  why  not 

make  it  between  Crocker  and  Field  and  Crocker?     One 
39* 


462  PROCEDURE  IN  THE  PATENT  OFFICE. 

of  two  parties  may  sue  the  firm  of  which  he  is  a  memher, 
so  he  may  be  put  in  interference  with  his  firm.  Nor  does 
the  fact  that  Field  swears  away  the  claim  of  priority  of 
Field  and  Crocker,  in  advance  of  the  declaration  of  inter- 
ference, present  any  reason  why  the  interference  should 
not  be  declared  and  tried.  It  simply  saves  time,  expense, 
and  trouble  in  the  trial  of  cases,  and  that  is  all. 

"But  Commissioner  Fisher,  in  his  reply  to  the  reasons 
of  appeal  in  this  case,  after  referring  to  the  opinion  of 
Commissioner Foote, adds  the  following,  viz: 

" '  1.  This  appellant,  having  heretofore  made  oath  that 
the  invention  was  joint,  cannot  now  be  permitted  to 
allege  that  it  was  a  sole  invention.  To  permit  this  would 
offer  a  premium  to  perjury.  (See  Child  v.  Adams,  1  Fish., 
189.) 

" '  2.  The  remedy,  if  an  honest  error  existed  and  any 
remedy  could  be  afforded,  should  have  been  preceded  by 
a  surrender  of  the  joint  patent  for  cancellation.  That 
this  may  be  and  has  been  done,  see  Batten  v.  Taggart,  (17 
How.,  84.') 

"  The  very  high  respect  which  I  entertain  for  the  opin- 
ion of  the  present  Commissioner  on  any  question  of  pat- 
ent law  led  me  at  first  to  suppose  that  if  any  remedy  does 
exist  at  all  for  the  error  in  this  case,  it  could  not  be  in 
the  issuing  of  a  new  original  patent;  and,  being  clear  in 
my  conviction  that  it  is  not  the  case  for  a  reissue,  as  pro- 
vided for  in  section  13  of  the  act  of  1836,  I  suppose 
the  applicant  was  altogether  remediless,  except  through 
a  bill  in  equity;  and  yet  it  seemed  to  be  hardly  in  con- 
sonance with  the  spirit  of  our  patent  system  that  a  mi&- 
take  thus  honestly  made,  as  this  was  admitted  to  be,  must 
go  entirely  without  relief  from  the  office.  But  on  look- 


INTERFERENCE.  463 

ing  into  the  case  of  Child  v.  Adams,  I  find  that  it  does  not 
sustain  the  position  which  it  is  cited  to  sustain.  The 
syllabus  of  that  case,  as  made  by  the  reporter,  and  very 
accurately  made  too,  embraces  the  following  seven  prop- 
ositions only,  viz : 

"  1.  Section  13  of  the  act  of  July  4,  1836,  by  defining 
the  condition  under  which  the  power  it  confers  shall  be 
examined,  necessarily  excludes  it  in  all  others,  except, 
perhaps,  the  correction  of  clerical  errors. 

"  2.  Where  a  statute  defines  the  extent  of  power  given 
to  one  who  acts  ministerially,  the  courts  cannot  extend 
it,  or  validate  acts  done  without  or  beyond  its  authority. 

"  3.  The  Commissioner  has  no  power  to  confirm  a  pat- 
ent obtained  by  false  suggestion,  either  by  pardoning  the 
offense  or  excusing  it  on  the  plea  of  innocent  ignorance. 

"  4.  If  an  alien,  either  through  ignorance  or  intention, 
falsely  represents  himself  as  a  citizen  in  order  to  obtain 
a  patent,  the  patent  so  procured  is  inoperative  and  in- 
valid to  vest  a  title  in  the  alleged  invention. 

"  5.  The  oath  of  citizenship  and  other  duties  required 
by  section  6  of  the  act  of  July  4,  1836,  are  conditions- 
precedent,  without  which  the  Commissioner  has  no  au- 
thority to  grant  a  patent ;  and  a  defendant  may  allege 
the  neglect  or  fraudulent  omission  to  fulfill  these  condi- 
tions, or  any  of  these,  as  a  sufficient  defense. 

"  6.  M,  an  alien,  made  oath  that  he  was  a  citizen  of  the 
United  States,  and  obtained  a  patent.  Eight  years  after- 
wards he  surrendered  his  patent,  made  oath  that  he  was 
a  citizen  of  France,  paid  the  balance  of  the  fee  due  the 
Patent  Office,  and  obtained  a  reissue,  which  recited 
(among  other  things)  that  said  original  letters  were  grant- 
ed to  him  upon  his  belief  that  he  was  a  citizen  of  the 


464  PROCEDURE  IN  THE  PATENT  OFFICE. 

United  States,  which  belief  arose  from  ignorance  of  the 
laws  of  the  United  States :  Held,  that  the  original  and 
reissued  patents  were  both  invalid,  the  first  because  of 
false  suggestions;  the  second  from  want  of  power  in  the 
Commissioner  to  grant  it. 

"  7.  Held,  also,  that  the  Commissioner  could  not  grant 
a  new  original  patent  eight  years  after  the  invention 
had  been  in  public  use. 

"  Now,  the  court  did  not  decide  in  this  case  that  the 
Frenchman,  having  once  sworn  himself  to  be  a  citizen 
of  the  United  -States,  under  an  honest  misapprehension, 
could  not  be  permitted  to  allege  himself  to  be  a  French 
citizen.  On  the  contrary,  it  may  be  fairly  inferred,  from 
the  opinion  delivered  in  the  case,  that  he  might  have 
corrected  his  honest  mistake  if  he  had  made  timely  ap- 
plication to  do  so  in  the  right  way.  Judge  Grier  ex- 
pressly declares  that  Mini,  (the  Frenchman,)  with  the 
consent  of  his  assignees,  had  the  right  to  surrender  his 
original  patent  to  be  canceled,  '  and  when  the  invention 
or  discovery  had  not  been  in  public  use  more  than  two 
years  the  Commissioner  might  probably  grant  him  a  new 
original  patent  on  an  original  application,'  &c.  The 
learned  judge  flatly  decides  that  the  Commissioner  has 
no  power  under  the  13th  section  of  the  act  of  July  4, 
1836,  to  grant  a  new  patent  to  one  who  has  obtained  it 
by  false  suggestion,  which  shall  retroact  by  way  of  con- 
firmation of  the  original  or  stand  in  its  place;  but  says 
that  he  probably  has  the  power  to  grant  a  new  original 
patent  in  such  a  case,  provided  the  invention  or  discovery 
had  not  been  in  public  use  more  than  two  years  before 
filing  an  original  application,  truly  stating  the  citizenship 
of  the  inventor.  So  that,  in  fact,  the  case  of  Child  v. 


INTERFERENCE.  465 

Adams,  so  far  from  militating  against  the  right  of  the 
applicant  in  this  case  to  have  a  new  original  patent  on 
his  new  original  sole  application,  actualty  favors  it.  The 
second  proposition  of  Commissioner  Fisher  also  fails  of 
support  from  the  case  of  Batten  v.  Taggert,  viz,  that  the 
remedy,  if  any,  could  only  be  found  in  a  surrender  of  the 
joint  patent  for  cancellation.  The  case  cited  only  shows 
that  such  a  thing  had  been  done,  but  it  does  not  appear 
that  it  was  ever  decided  to  be  properly  and  legally  done, 
as  it  legally  was  never  challenged.  It  certainly  does  not 
decide  that  a  surrender  must  necessarily  precede  the 
granting  of  a  new  original  patent. 

"  As  Judge  Grier,  in  the  case  of  Child  v.  Adams,  sug- 
gests that  the  court  might  probably  in  Mini's  case  have 
granted  a  new  original  patent  on  an  original  application, 
let  us  see  if  it  is  not  more  than  probable  that  he  had  the 
power  to  do  so.  If  we  refer  to  the  language  of  the  8th 
section  of  the  act  of  1836,  and  consider  its  provisions,  we 
find  that  that  probability  rises  to  a  certainty.  That  sec- 
tion declares  that  *  whenever  an  application  shall  be  made 
for  a  patent  which,  in  the  opinion  of  the  Commissioner, 
would  interfere  with  any  other  patent  for  which  an  ap- 
plication may  be  pending,  or  with  an  unexpired  patent 
which  shall  have  been  granted,  it  shall  be  the  duty  of 
the  Commissioner  to  give  notice  thereof  to  such  appli- 
cants or  patentees,  as  the  case  may  be;  and  if  either  shall 
be  dissatisfied  with  the  decision  of  the  Commissioner 
on  the  question  of  priority  of  right  or  invention,  on  a 
hearing  thereof,  he  may  appeal,'  &c.  In  this  case,  it  is 
conceded  that  Crocker  has  made  an  original  application 
for  a  patent,  which  interferes  and  is  identical  with  the 
patent  issued  to  Crocker  and  Field.  This  being  so,  it  was 


466  PROCEDURE  IN  THE  PATENT  OFFICE. 

the  duty  of  the  Commissioner  at  once  to  declare  the  in- 
terference, and  to  decide  the  question  of  priority  of  inven- 
tion ;  and,  upon  the  showing  of  both  Field  and  Crocker, 
it  appearing  that  Crocker  was  the  sole  inventor,  it  was 
his  duty,  in  the  absence  of  the  testimony  to  the  contrary, 
to  decide  priority  in  favor  of  Crocker,  and  to  grant  him 
a  new  original  patent.  Had  Crocker  neglected  to  make 
his  original  application  for  the  sole  patent  for  more  than 
two  years,  his  case  would  have  been  in  that  respect  anal- 
ogous to  the  case  of  the  Frenchman,  Mini,  and  he  would 
not  have  been  entitled  to  his  new  original  patent,  simply 
because  the  invention  would  have  been  too  long  in  pub- 
lic use  to  entitle  him  to  it,  as  was  Mini's  case.  As  I  have 
before  said,  the  fact  that  Crocker,  individually  and  solely, 
would  be  a  contesting  party  against  himself  and  Field 
jointly  would  not  in  the  least  alter  the  case ;  nor  would 
the  fact  that  Field  had,  under  oath,  disclaimed  all  claim 
of  inventorship  be  any  reason  for  not  declaring  the  in- 
terference. The  joint  patent  and  the  sole  application 
were  conflicting  claims,  and  required  absolutely  an  inter- 
ference to  be  declared.  The  duty  of  the  Commissioner 
in  such  a  case  seems,  by  the  terms  of  the  8th  section  of 
the  act  of  1836,  to  be  made  imperative,  and,  being  so,  it 
was  error  to  have  refused  a  declaration  of  interference 
and  rejected  the  application  for  a  new  original  patent  to 
Crocker,  as  the  sole  inventor. 

"For  these  reasons  the  decision  of  the  Commissioner 
of  Patents  is  reversed."  (MS.  Appeal  Cases,  1869.) 

297.  EACH  PARTY  TO  FILE  STATEMENT  UNDER  OATH. — 
Upon  the  declaration  of  an  interference  each  party  will 
be  required,  before  any  time  is  set  for  the  taking  of  testi- 
mony, to  file  a  statement  under  oath,  giving  the  date  and 


INTERFERENCE.  467 

a  detailed  history  of  the  invention,  showing  the  success- 
ive experiments,  steps  of  development,  extent  and  char- 
a»cter  of  use,  and  forms  of  embodiment.  Such  statement 
shall  not  be  open  to  inspection  by  the  other  party  until 
both  are  filed,  or  until  the  time  for  filing  both  has  expired. 
(Patent  Office  Rules,  July,  1870.) 

298.  ADJUDICATION  BY  DEFAULT. — In  default  of  such 
filing  by  either  party,  or  if  the  statement  of  either  fails 
to  overcome  the  prima  facie  case  made  by  the  respective 
dates  of  application,  or  if  it  shows  that  the  invention  has 
been  abandoned,  or  that  it  has  been  in  public  use  for  more 
than  two  years  prior  to  the  application  of  affiant,  the  other 
party  shall  be  entitled  to  an  adjudication  by  default  upon 
the  case  as  it  stands  upon  the  record.     (Ib.) 

299.  WHEN  THE  CASE  is  CLOSED  AND  MAY  BE  SET  FOR 
HEARING. — Where  no  testimony  is  taken  by  the  appli- 
cant, upon  whom  rests  the  burden  of  proof,  or  where  tes- 
timony has  been  taken  by  such  applicant,  but  not  by  the 
other  party,  during  the  time  assigned  to  the  latter,  the 
case  will  be  considered  closed,  and  may,  at  the  expiration 
of  the  time  assigned  to  such  parties  respectively,  be  set 
down  for  hearing  at  any  time  not  less  than  ten  days 
thereafter.     (76.) 

300.  APPEAL  IN  INTERFERENCE  CASES. — In  cases  of  in- 
terference parties  have  the  same  remedies  by  appeal  as 
other  applicants  to  the  examiners-in-chief  and  to  the 
Commissioner,  but  no  appeal  lies  in  such  cases  from  the 
decision  of  the   Commissioner.     Appeals   in  interference 
cases  should  be  accompanied  with  a  brief  statement  of 
the  reasons  thereof.     (Ib.} 

801.  NOTICE  OF  DECLARATION  OF  INTERFERENCE. — When 
an  interference  is  declared  notice  will  be  given  to  both 


468  PROCEDURE  IN  THE  PATENT  OFFICE. 

parties  or  to  their  attorneys.  When  one  of  the  parties 
has  filed  a  caveat,  or  already  received  a  patent,  duplicate 
notices  will  be  sent  to  the  patentee  or  caveator  and  to 
his  attorney  of  record.  (Ib.) 

302.  NOTICE  BY  PUBLICATION. — "Where  one  of  the  par- 
ties resides  abroad  and  has  no  known  agent  in  the  United 
States,  in  addition  to  the  notice  sent  by  mail,  notice  may 
be  given  by  publication  in  a  newspaper  of  general  circu- 
lation in  the  city  of  Washington  once  in  a  week  for  three 
successive  weeks.     (Ib.} 

303.  FIRST  APPLICANT  PRESUMED  TO  BE  THE  PRIOR  IN- 
VENTOR.— In  cases  of  interference  the  party  who  first  filed 
so  much  of  his  application  for  a  patent  as  illustrates  his 
invention  will  be  deemed  the  first  inventor  in  the  ab- 
sence of  all  proof  to  the  contrary.     (Ib.) 

In  the  case  of  Smith  v.  Burlew  the  Commissioner  says: 
"  The  opinion  of  the  board  of  examiners-in-chief  announ- 
ces, as  a  rule  of  practice,  the  following  extraordinary 
proposition:  'Heretofore,  this  board,  in  cases  of  inter- 
ference between  an  applicant  and  a  patentee,  have  leaned 
to  the  side  of  the  applicant  where  there  has  been  doubt 
as  to  who  was  the  prior  inventor,  and  have  been  disposed 
to  grant  the  prayer  of  the  applicant,  on  the  ground  that 
this  is  expedient  in  order  that  it  may  be  determined  in  a 
court  of  law,  if  the  parties  so  choose,  to  which  of  said 
parties  is  rightly  issued  letters-patent.' 

"  It  is  an  old  maxim  of  the  law  that  prior  tempore,potior 
jure,  and  when  a  party  has  made  his  application  and  ob- 
tained his  patent,  it  would  seem  that  his  priority  in  point 
of  time  should  entitle  him  to  some  consideration  as 
against  later  and  less  diligent  competitors.  Accordingly, 
by  the  rules  of  this  office,  following  the  ordinary  rules  of 


INTERFERENCE. 

evidence,  the  burden  of  proof  is  put  upon  the  last  appli- 
cant to  overcome  by  evidence  the  presumption  of  pri- 
ority arising,  from  the  earlier  application.  The  effect  of 
this  rule  is  to  declare  that,  as  the  case  stands  at  the  decla- 
ration of  interference,  it  must  be  decided  in  favor  of  the 
earlier  applicant  if  no  proof  be  offered ;  or,  if  the  testi- 
mony is  equally  balanced,  it  must  be  decided  in  his  favor; 
or,  if  it  be  simply  doubtful,  he  is  entitled  to  the  benefit 
of  the  doubt.  To  give  the  benefit  of  the  doubt  to  the 
last  applicant  is  simply  to  presume  that  the  first  appli- 
cant is  not  the  first  inventor,  which  would  neither  be  in 
accordance  with  law  nor  common  sense.  The  logical  re- 
sult of  such  a  doctrine  would  be,  in  every  case  where  there 
are  two  applicants,  neither  of  whom  has  a  patent,  but 
where  the  proofs  raise  a  doubt,  that  a  patent  should  issue 
to  both,  in  order  that  the  courts  may  decide  between  them. 

"The  truth  is,  that  the  Patent  Office  is  made  by  law 
the  tribunal  where  in  the  first  instance  the  question  of 
priority  is  to  be  determined,  and  where  it  is  to  .be  de- 
termined upon  testimony  taken  and  applied  according  to 
the  ordinary  rules  of  evidence.  If  there  is  error,  a  rem- 
edy is  given  by  §  16,  act  1836,  (vide  supra,  p.  26,)  by  bill 
in  equity,  to  either  party,  whether  a  patent  be  issued  to 
him  or  not.  This  provision  is  ample,  and  takes  away  all 
necessity  and  excuse  for  foisting  upon  the  country,  in 
the  face  of  the  ordinary  legal  presumptions,  two  pat- 
ents for  the  same  invention,  both  of  which  may  be  used 
as  means  of  speculations  upon,  or  annoyance  to,  the  in- 
nocent public. 

"  The  decision  of  the  board  of  examiners-in-chief  is 
reversed,  and  the  priority  is  awarded  to  Smith."  (Com- 
missioners' Decisions,  May  16,  1870.) 

40 


470  PROCEDURE  IN  THE  PATENT  OFFICE. 

As  two  patents  ought  not  to  be  granted  for  the  same 
thing,  if  it  can  be  avoided,  the  benefit  of  a  doubt  should 
be  given  to  the  patentee  on  an  interference  with  an  ap- 
plicant. (Wheeler  and  Chenoweth,  Commissioners'  Decis- 
ions, 1869,  p.  3.) 

304.  ASSIGNMENT  OF  TIME  FOR  TAKING  TESTIMONY. — A 
time  will  be  assigned  in  which  the  other  party  shall  com- 
plete his  direct  testimony;  and  a  further  time  in  which 
the  adverse  party  shall  complete  the  testimony  on  his 
side ;  and  a  still  further  time  in  which  both  parties  may 
take  rebutting  testimony,  but  shall  take  no  other.     If 
there  are  more  than  two  parties,  the  time  for  taking  testi- 
mony shall  be  so  arranged,  if  practicable,  that  each  shall 
have  a  like  opportunity  in  his  turn,  each  being  held  to 
go  forward  and  prove  his  case  against  those  who  filed 
their  applications  before  him.     (Patent  Office  Rules,  July, 
1870.) 

305.  POSTPONEMENT  OF  HEARING. — There  is  nothing  in 
the  laws  relating  to  the  Patent  Office,  or  in  the  rules 
adopted  by  the  Commissioner,  to  prevent  him  from  post- 
poning the  hearing  of  an  interference,  if,  in  his  opinion, 
the  justice  of  the  case  should  require  it,  and  especially 
for  the  correcting  of  an  irregularity  in  matters  of  form. 
(Smith  v.Ftickenger9MS.  Appeal  Cases,  D.  a,  1843.) 

Applications  for  postponement  are  within  the  discre- 
tion of  the  Commissioner,  and  it  will  be  presumed  that 
his  discretion  has  been  soundly  exercised.  (O'Reilly  v. 
Smith,  ib.,  1853.) 

Where,  therefore,  depositions  in  an  interference  had 
been  correctly  taken,  but  had  not  been  transmitted  in 
the  form  required,  so  that  they  could  be  considered  by 
the  Commissioner,  held  that  the  Commissioner  had  a 


INTERFERENCE.  471 

right  to  postpone  the  hearing,  to  allow  the  parties  to  cure 
the  informality,  if  he  should  deem  such  action  necessary 
to  further  the  ends  of  justice.  (/&.) 

306.  AFFIDAVIT  REQUIRED. — If  either  party  wishes  the 
time  for  taking  his  testimony,  or  for  the  hearing,  post- 
poned, he  must  make  application  for  such  postponement, 
and  must  show  sufficient  reason  for  it  by  affidavit  filed 
before   the   time  previously  appointed  has  elapsed,  if 
practicable;   and  must  also  furnish  his  opponent  with 
copies  of  his  affidavits  and  with  reasonable  notice  of 
the  time  of  hearing  his  application.    (Patent  Office  Rules, 
July,  1870.) 

Affidavits  on  which  to  move  for  an  enlargement  of  the 
time  to  take  testimony  in  an  interference,  on  the  ground 
that  the  moving  party  could  not  obtain  the  attendance 
of  his  witnesses  at  the  time  appointed  to  take  their 
examination,  should  state  the  names,  competency,  and 
materiality  of  the  witnesses  to  be  examined.  (O'Reilly 
v.  Smith,  MS.  Appeal  Cases,  D.  C.,  1853.) 

307.  EXAMINER  IN  CHARGE  OF  INTERFERENCES. — Cases 
of  interference  will,  when  the  issue  is  made  up  and  the 
testimony  taken,  be  tried  before  the  examiner  in  charge 
of  interferences.     (Patent  Office  Rules,  July,  1870.) 

308.  WHEN  AN  INTERFERENCE  WILL  BE  DISSOLVED. — 
If  an  interference  has  been  properly  declared,  it  will  not 
be  dissolved  without  judgment  of  priority,  founded  upon 
the  testimony  or  the  written  concession  of  one  of  the 
parties,  unless  the  invention  is  found  not  to  be  patent- 
able,  or  to  have  been  abandoned,  or  that  it  has  been  in 
public  use  for  more  than  two  years  prior  to  the  applica- 
tion of  either  party,  or  that  no  interference  in  fact  exists. 
(76.) 


472  PROCEDURE  IN  THE  PATENT  OFFICE. 

In  the  case  of  Duthie  v.  Casilear  the  Commissioner  says : 
"  This  is  a  motion  to  dissolve  an  interference.  Several 
reasons  are  urged  by  the  attorney  for  the  motion,  of 
which  only  one  will  be  considered. 

"  It  appears  that  Duthie's  patent  was  twice  rejected 
by  the  examiner  and  once  by  the  examiners-in-chief. 
Subsequently,  through  oversight  or  change  of  opinion, 
the  examiner  allowed  a  patent  to  Casilear.  He  after- 
ward took  up  the  application  of  Duthie,  and,  without 
amendment  or  order  from  the  Commissioner,  recon- 
sidered it,  and  placed  it  in  interference  with  the  patent 
of  Casilear.  This  course  was  irregular.  After  the  de- 
cision of  the  board  the  case  was  removed  from  the  juris- 
diction of  the  examiner,  and  he  could  not  reconsider  the 
case  without  an  order  from  the  Commissioner.  It  is 
somewhat  difficult  to  see,  also,  if  the  inventions  inter- 
fere, how  a  patent  was  granted  to  Casilear,  a  subsequent 
applicant.  At  all  events,  the  irregularity  in  the  recon- 
sideration of  Duthie's  case,  and  in  the  declaration  of  in- 
terference, are  such  that  the  motion  to  dissolve  the  inter- 
ference must  prevail.  The  interference  is  dissolved." 
(Commissioners'  Decisions,  September  15,  1870.) 

309.  PRIMARY  EXAMINER  CANNOT  DISSOLVE  AN  INTER- 
FERENCE.— In  the  case  of  Traut  v.  Diston  the  Commis- 
sioner says:  "In  this  case  the  primary  examiner,  upon 
the  filing  of  an  application  of  one  of  the  Trauts  as  sole 
inventor,  made  an  order  dissolving  the  above  inter- 
ference. This  order  was  irregular.  After  the  declara- 
tion of  an  interference  it  cannot  be  dissolved  except  by 
the  order  of  the  examiner  in  charge  of  interferences,  or 
the  Commissioner,  or  by  the  board  of  examiners-in-chief 
or  Commissioner  on  appeal.  If  facts  come  to  the  notice 


INTERFERENCE.  473 

of  the  primary  examiner  which  render  it  proper  that  the 
interference  should  be  dissolved,  or  if  new  cases  are  filed 
which  he  thinks  should  be  included  in  the  interference, 
he  can  only  act  through  the  examiner  in  charge  of  inter- 
ferences, to  whom  application  must  be  made. 

"The  order  made  by  the  primary  examiner  is  set  aside 
and  the  case  remanded  to  the  examiner  of  interferences." 
(Commissioners'  Decisions,  September  15,  1870.) 

310.  Two  YEARS'  PUBLIC  USE,  (vide  supra,  p.  264.) — In 
the  case  of  Young  v.  Hoard  the  Commissioner  says: 
"  This  is  a  motion  to  dissolve  an  interference,  upon  the 
ground  that  the  invention  is  shown  to  have  been  in  pub- 
lic use  for  more  than  two  years  prior  to  the  application 
of  Young,  which  was  filed  April  8,  1870. 

"  Affidavits  have  been  filed  on  both  sides,  from  which 
it  appears  that  the  patent  with  which  Young  claims  an 
interference  was,  in  fact,  granted  to  John  "W.  Hoard,  R. 
A.  Dennison,  and  Young  himself,  as  assignees  of  Hoard ; 
that,  in  company  with  his  copatentees,  he  sold  this  patent 
to  the  Union  Eyelet  Company,  who  proceeded  to  manu- 
facture under  it  in  May,  1867,  and  have  continued  the 
manufacture  until  the  present  time.  These  facts  are  not 
denied  by  Young,  but  he  asserts  that,  while  the  use  of 
the  invention  by  the  Union  Eyelet  Company  was  begun 
and  continued  with  his  knowledge  and  consent  in  May, 
1867,  and  for  about  six  months  thereafter,  after  that  time 
he  did  not  assent  to  such  use,  although  he  admits  that  it 
went  on  in  spite  of  him. 

"  The  admitted  facts  are  fatal  to  Young's  application. 
It  is  not  necessary  that  the  use  should  have  been  a  con- 
tinuing use,  extending  over  a  longer  period  than  two 
years  prior  to  the  application,  in  order  to  render  the 

40* 


474  PROCEDURE  IN  THE  PATENT  OFFICE. 

patent  void.  It  is  sufficient  if  it  be  a  public  use  or  sale, 
at  any  time  and  for  any  length  of  time,  occurring  more 
than  two  years  before  the  filing  of  the  application.  (See 
Hunt  v.  Howe,  Book  of  Appeals,  vol.  2,  p.  380 ;  Sanders  v. 
Logan,  2  Fisher,  167.) 

"  The  motion  is  sustained,  the  interference  will  be  dis- 
solved, and  the  application  of  Young  will  be  rejected, 
because  the  invention  claimed  by  applicant  was  in  public 
use  for  more  than  two  years  prior  to  his  application." 
(Commissioners'  Decisions,  June  13,  1870.) 

311.  WHEN  A  SECOND  INTERFERENCE  WILL  BE  DECLARED. 
A  second  interference  is  only  a  rehearing  of  the  same  case. 
(Earns  v.  Richards,  MS.  Appeal  Cases,  D.  C.,  1859.) 

A  second  interference  will  not  be  declared  upon  a  new 
application  filed  by  either  party  during  the  pendency  of 
an  interference  or  after  judgment,  nor  will  a  rehearing 
be  granted,  unless  it  be  shown  to  the  satisfaction  of  the 
Commissioner  (in  person)  that  the  party  desiring  a  new 
interference  or  rehearing  has  new  and  material  testimony, 
which  he  could  not  have  procured  in  time  for  the  hear- 
ing, or  unless  other  sufficient  reasons  be  shown  satis- 
factory to  the  Commissioner.  (Rules  of  the  Patent  Office, 
July,  1870.) 

In  the  case  of  Abraham  v.  Fletcher,  the  Acting  Commis- 
sioner (Hodges)  says :  "  The  parties  have  heretofore  been 
opposed  to  one  another  in  a  previous  interference  respect- 
ing the  same  invention,  as  well  as  two  other  parties,  S. 
M.  Clark  and  M.  T.  Gosnell.  In  the  course  of  the  con- 
troversy Abraham  became  satisfied  that  he  was  anticipated 
by  Clark,  and  took  no  testimony,  supposing  he  could  not 
recover  against  him.  The  case  was  ultimately  decided  in 
favor  of  Fletcher,  upon  the  ground  that  the  device,  which 


INTERFERENCE.  475 

Clark  proved  that  he  had  originated  before  Fletcher  had 
made  the  one  in  controversy,  was  not  identical  with  it, 
but  was  a  different  invention.  When  Abraham  learned 
this,  he  also  ascertained,  upon  inquiry,  that  Fletcher's 
proof  did  not  carry  the  discovery  as  far  back  as  he  claims 
that  he  himself  had  made  it.  He  thereupon  filed  a  sec- 
ond application.  Upon  his  petition,  and  upon  his  show- 
ing the  circumstances,  it  was  ordered  by  the  Acting  Com- 
missioner that  the  issue  of  Fletcher's  patent  should  be 
suspended,  and  that  the  present  interference  should  be 
declared  between  Abraham's  second  application  and  the 
previous  one  filed  by  Fletcher.  Fletcher  now  moves,  by 
his  counsel,  that  this  interference  should  be  dissolved, 
and,  secondly,  that  the  order  to  suspend  the  issuing  of 
Fletcher's  patent  should  be  rescinded. 

"  It  is  urged  that  the  interference  should  be  dissolved,  in 
the  first  place,  upon  the  ground  that  the  decision  in  the 
former  interference  has  settled  the  question  as  between 
these  parties ;  that  the  question  of  priority  has,  in  other 
words,  become  res  adjudicata;  and  that  Abraham  is  estop- 
ped by  it  from  setting  up  any  claims  as  a  prior  inventor 
against  Fletcher.  We  apprehend  that  no  such  effect  can 
be  given  to  these  decisions  of  the  office.  It  is  expressly 
provided  in  the  12th  section  of  the  act  of  1836  that  they 
shall  not  preclude  the  parties  from  contesting  the  validity 
of  a  patent  in  trials  at  law.  There  is  still  less  reason  for 
attributing  such  force  to  them  in  proceedings  before  the 
office,  while  the  parties  are  yet  before  it.  Even  at  law, 
the  decision  of  a  judicial  tribunal  is  not  regarded  in  that 
light  until  the  term  has  elapsed  and  the  case  has  become 
merged  in  a  judgment  beyond  the  control  of  the  court. 
And  so  long  as  no  patent  has  issued  the  whole  matter  is 


476  PROCEDURE  IN  THE  PATENT  OFFICE. 

still  pending  in  the  office,  and  there  is  nothing  which  can 
be  regarded  as  res  adjudicata,  so  far  as  to  limit  it  in  the 
exercise  of  its  usual  jurisdiction. 

"It  should  be  further  remarked,  that  the  doctrine  con- 
tended for,  if  sustained,  would  render  all  second  inter- 
ferences between  the  same  parties  respecting  the  same 
invention  utterly  useless  and  vain.  There  would  be  no 
question  left  open  between  them,  but  their  rights  would 
be  established  by  the  result  of  the  first  interference  be- 
yond the  power  of  the  office  to  modify.  Yet,  from  the 
earliest  organization  of  the  office,  it  has  been  the  settled 
practice  to  declare  such  second  interferences,  and  therein, 
when  proper,  to  reverse  the  decision  in  the  former  one. 
And  numerous  patents  have  been  granted  to  the  success- 
ful parties  upon  such  second  interferences,  notwithstand- 
ing patents  had  been  granted  to  their  adversaries  upon 
the  previous  trials. 

"The  8th  section  of  the  act  of  1836  has,  in  fact,-always 
been  regarded  as  imperatively  requiring  that  an  interfer- 
ence should  be  declared  whenever  a  pending  application 
is  found  to  be  in  conflict  with  another  or  with  any  unex- 
pired  patent.  It  has  never  been  supposed  that  such  an 
interference  could  be  denied  because  the  question  to  be 
raised  had  already  been  tried  and  settled  by  the  office. 
"When  it  was  found  that  this  was  open  to  abuse,  and  that 
parties  persisted  in  filing  repeated  conflicting  applications, 
in  orderto  delay  the  issuing  of  a  patentto  their  successful 
opponents,  the  rule  was  adopted  that  upon  the  determina- 
tion of  an  interference  a  patent  should  issue  to  the  party  re- 
covering. If,  then,  the  other  filed  a  new  application  and 
demanded  an  interference,  it  should  be  granted  between 
that  application  and  the  patent  which  had  been  issued. 


INTERFERENCE.  477 

"No  more  inducement  usually  remains,  therefore,  for 
filing  such  second  application  any  more  than  for  com- 
mencing causeless  suits  at  law.  This  rule,  however,  is 
modified  whenever  the  failing  party  shows  cause  why  he 
should  have  a  rehearing,  just  as  courts  grant  new  trials 
after  a  verdict.  In  such  cases  the  issuing  of  the  patent 
to  the  winning  party  is  ordered  to  «be  suspended,  and  the 
interference  is  declared  between  his  original  application 
and  the  new  application  filed  by  the  other  party. 

"  Such  were  the  circumstances  of  the  present  case.  No 
question  was  made  upon  the  hearing  as  to  the  reasonable- 
ness of  the  ground  upon  which  the  orders  were  made. 
The  motion  is  refused."  (Commissioners'  Decisions,  1869, 
p.  50.) 

In  the  case  of  Diston  v.  Emerson,  Acting  Commissioner 
Duncan  says :  "  This  ia  a  motion  for  the  reopening  of 
the  interference,  which  is  now  before  the  Commissioner 
on  appeal  from  the  decision  of  the  examiners-in-chief  in 
favor  of  the  applicant. 

"  The  patentee  has  taken  no  testimony,  while  the  appli- 
cant appears  to  have  carried  his  invention  back  to  a  date 
prior  to  the  filing  of  the  application  upon  which  the  pat- 
ent was  granted. 

"Patentee  now  moves  for  a  rehearing,  on  the  ground 
that  since  the  closing  of  testimony  new  evidence  has 
been  discovered  which  he  deems  material  to  the  issue, 
said  evidence  being  to  the  effect  that  applicant  saw  the 
invention  going  into  public  use,  but  neglected  to  assert 
his  right  thereto  by  warning  the  public  to  desist  from 
the  practice  of  that  to  which  he  himself  was  laying  claim, 
and,  further,  that  applicant  denounced  the  invention  as 
visionary,  worthless,  and  impracticable ;  the  apparent 


478  PROCEDURE  IN  THE  PATENT  OFFICE. 

object  of  this  evidence  being  to  show  that  at  best  appli- 
cant only  regarded  the  invention  as  experimental  and 
problematic  in  his  hands  until  after  it  was  reduced  to 
practice  and  introduced  into  public  use  by  another,  or, 
if  it  is  to  be  regarded  as  perfected  by  him,  that  the 
neglect  on  his  part  was  such  as  to  constitute  a  forfeiture 
of  his  right  to  a  patent. 

"  Standing  alone,  these  alleged  facts  would  not  estab- 
lish either  of  the  conclusions  named;  the  authorities  cited 
do  not  go  to  this  extent ;  yet  from  an  addendum  to  the 
opinion  of  the  examiuers-in-chief  it  appears  that  there 
is  already  in  the  case  evidence  of  laches  on  the  part  of 
applicant.  Said  opinion  is  signed  by  but  two  members 
of  the  board,  and  one  of  these  appended  a  postscript  in 
these  words :  '  I  subscribe  this  with  hesitation,  having 
doubts  whether  Diston  can  be  said  to  have  exercised 
reasonable  diligence  in  adapting  and  perfecting  the 
invention.' 

"  Under  these  circumstances  it  seems  desirable  to  have 
the  further  evidence,  now  offered,  bearing  upon  the  ques- 
tion of  laches.  Taken  in  connection  with  the  facts  already 
proven,  it  may  have  a  significance  that  would  not  attach 
to  it  if  considered  separately. 

"  It  will  be  to  the  advantage  of  both  parties  doubtless 
that  the  question  should  be  exhaustively  investigated 
before  the  Patent  Office,  rather  than  slighted  here,  to 
become,  of  necessity,  a  bone  of  contention  before  the 
courts. 

"Applicant  can  hardly  complain  of  the  delay  that  a 
reopening  of  the  case  will  occasion,  as  the  record  shows 
that  he  rested  nearly  two  years  after  his  rejection,  upon 
reference  to  the  patent  which  he  is  now  seeking  to  de- 


INTERFERENCE.  479 

stroy,  before  taking  action  to  determine  the  question  of 
priority;  the  parties  owning  the  patent  being  allowed 
to  go  on,  meanwhile,  developing  a  large  manufacturing 
enterprise  by  a  liberal  expenditure  of  capital,  all  un- 
warned and  unconscious  of  impending  danger. 

"  The  motion  is  granted  and  the  case  will  be  reopened." 
(Commissioners' Decisions,  August  25, 1870.) 

In  the  case  of  Covel  v.  Maxim  the  Commissioner  says : 
"  This  is  a  motion  on  the  part  of  E.  Hall  Covel  to  reopen 
this  case  for  another  hearing  and  for  further  testimony. 

"The  facts  are,  in  substance,  as  follows:  The  inter- 
ference was  declared  February  2,  1869.  Covel,  having 
made  oath  to  his  invention  sixteen  days  later  than  the 
other  applicants,  was  ruled  to  take  his  testimony  first, 
and  to  close  it  on  the  second  Monday  in  March.  The 
day  of  hearing  was  fixed  for  the  fifth  Monday  of  March, 
1869. 

"  During  the  five  weeks  allotted  to  him  Covel  took  no 
testimony  whatever ;  but  when  it  had  elapsed  he  applied 
to  the  examiner  and  to  the  Commissioner  for  further 
time.  Upon  this  application  the  time  was  extended  to 
April  26,  and  the  day  of  hearing  was  postponed  to  the 
second  Monday  of  May.  Covel  still  took  no  testimony, 
but  allowed  the  case  to  go  entirely  by  default.  The  ex- 
aminer, therefore,  on  the  day  of  hearing,  had  no  choice 
but  to  decide  against  him,  as  his  opponents  had  made 
the  prior  oath,  and  as  he,  upon  whom  the  burden  of 
proof  lay,  had  taken  no  testimony  whatever. 

"As  soon  as  he  was  notified  of  this  decision,  Mr.  Covel 
appeared  before  the  Commissioner,  with  an  application 
for  a  rehearing  and  for  further  time.  Upon  hearing  his 
statements,  in  the  presence  of  the  examiner,  the  Com- 


480  PROCEDURE  IN  THE  PATENT  OFFICE. 

missioner  declined  to  grant  him  the  three  months  for 
which  he  asked  upon  his  unsupported  demand,  but  sug- 
gested that  he  should  present  affidavits  showing  the  ne- 
cessity for  such  an  extension.  At  his  own  request  he 
was  allowed  a  few  days  to  visit  New  York  upon  that 
errand.  This  was  about  June  1. 

"Nothing  further  having  been  heard  from  Mr.  Covel, 
on  July  9  the  examiner  addressed  a  letter  to  him,  notify- 
ing him  that  his  affidavits,  if  he  intended  to  produce  any, 
must  be  filed  within  twenty  -days,  as  further  delay  was 
unreasonable.  This  notice  he  alleges  he  did  not  receive 
until  after  the  twenty  days  had  expired ;  and  upon  this 
point,  and  it  is  the  only  one,  he  is  sustained  by  the  affi- 
davits of  others. 

"Nevertheless  he  had  the  twenty  days,  and  when  he 
did  hear"6f  the  notice  he  came  again  to  Washington,  and 
obtained  from  the  Acting  Commissioner  an  extension  to 
August  21,  thus  giving  him  over  twenty  days  more. 

"  This  time  passed  like  all  the  former  allowances.  Not 
an  affidavit  was  or  has  been  filed  showing  what  testimony 
he  proposed  to  take,  why  he  needed  so  long  a  time  to 
take  it,  or  disclosing  any  of  the  facts  required  upon  every 
motion  to  open  a  default  or  grant  a  rehearing. 

"  Finally,  on  the  7th  of  September,  seventeen  days 
after  the  last  allowance  of  time,  and  four  months  after  the 
decision,  his  motion  was  finally  denied,  and  the  patent 
was  ordered  to  issue  to  Maxim  and  Radley. 

"As  usual,  Mr.  Covel  now  appears  again  with  a  motion 
for  more  time.  Up  to  the  present  moment  he  has  taken 
no  proof,  has  offered  no  affidavit  except  his  own  to  show 
what  proof  he  desires  to  offer,  or  that  he  has  proof  to 
offer;  and  his  own  affidavits  give  no  details,  but  are  con- 


INTERFERENCE.  481 

fined  to  statements  of  the  most  general  character.  The 
only  evidence  of  vitality  that  he  has  shown  has  been  ex- 
hibited when  the  office — its  patience  outraged  beyond 
limit,  and  mindful  of  the  fact  that  the  other  applicants 
have  some  rights  in  the  premises — has  notified  him  that 
it  could  delay  no  longer.  It  is  difficult  to  believe  that 
such  persistent  waste  of  time  was  not  intended  simply  to 
delay  the  issue  of  a  patent  to  those  whom  applicant 
already  believed  to  be  the  prior  inventors.  He  declares 
by  affidavit  that  he  had  no  such  intention,  and  he  is  en- 
titled to  the  benefit  of  the  doubt;  but  he  by  no  means 
makes  a  case  which  ought  to  induce  the  Commissioner 
for  a  moment  to  delay  or  suspend  the  issue  of  a  patent 
to  those  who  have  so  long  ago  been  adjudged.entitled  to 
receive  it,  and  against  whose  claim  not  an  iota  of  testi- 
mony has  yet  been  offered  after  these  mouths  of  delay. 

"The  notice  of  the  decision  of  the  examiner  fixed  a 
limit  of  appeal,  which  has  long  since  passed.  This  might, 
in  a  proper  case,  have  been  enlarged,  upon  motion  to  the 
Commissioner.  Failing  to  do  this,  the  right  of  Maxim 
and  Radley  to  a  patent  ought  not  now  to  be  disturbed, 
especially  as,  in  the  absence  of  testimony,  the  correct- 
ness of  the  decision  is  beyond  dispute."  (Commissioners' 
Decisions,  1869,  p.  78.) 

312.  WITHDRAWAL  OF  CLAIMS  WHICH  DO  NOT  INTER- 
FERE.— When  an  application  is  adjudged  to  interfere  with 
a  part  only  of  another  pending  application,  the  interfer- 
ing parties  will  be  permitted  to  see  or  obtain  copies  of 
so  much  only  of  the  specifications  as  refers  to  the  inter- 
fering claims.  And  either  party  may,  if  he  so  elect,  with- 
draw from  his  application  the  claims  adjudged  not  to  in- 
terfere, and  file  a  new  application  therefor:  Provided, 
41 


482  PROCEDURE  IN  THE  PATENT  OFFICE. 

That  the  claims  so  withdrawn  cover  inventions  which  do 
not  involve  the  devices  in  interference :  And  provided  also, 
That  the  devices  in  interference  are  eliminated  from  the 
new  application.  In  such  case  the  latter  will  be  exam- 
ined without  reference  to  the  interference  from  which  it 
was  withdrawn.  (Patent  Office  Rules,  July,  1870.) 

313.  JSTo  AMENDMENTS  RECEIVED  DURING  INTERFER- 
ENCE.— No  amendments  will  be  received  during  the  pen- 
dency of  an  interference,  except  as  provided  in  the  fore- 
going section.     (Ib.} 

314.  WITHDRAWAL  AND  REFILING  OF  APPLICATION  AFTER 
DECISION. — The  Commissioner  has  authority  to  permit 
one  of  two  competing  applicants  for  a  patent  for  a  simi- 
lar invention  to  withdraw  his  application,  after  decision 
upon  an  interference,  and  refile  his  application,  and  to 
declare  a  second  interference  between  such  last  applica- 
tion and  the  competing  one.   ( Wade  v.  Matthews,  5  Opin- 
ions Attorneys  General,  224.) 

But  the  permission  to  withdraw  an  application  in  such 
a  case  will  be  granted  or  not,  as  the  Commissioner  may 
be  satisfied.  The  matter  is  in  his  discretion,  to  be  exer- 
cised when  in  his  opinion  the  spirit  of  the  law  demands 
it.  (Ib.,  224.) 

315.  INTERFERENCE  MAY  BE  OPENED  TO  ADMIT  NEW  PAR- 
TIES.— There  is  nothing  in  the  statute  limiting  the  power 
of  the  Commissioner  to  a  single  interference,  and  the 
reason  for  the  declaration  of  a  subsequent  interference, 
if  any  should  appear  befoie  the  issue  of  the  patent,  is  as 
strong  as  for  the  first  one.     When,  therefore,  an  inter- 
ference was  declared  between  the  application  of  J  G  W, 
assignee  of  A  &  F,  and  a  patent  previously  issued  to  J 
M  S,  in  which  case,  upon  appeal  to  him,  the  chief  justice 


INTERFERENCE.  '       483 

declared  in  favor  of  J  G  "W,  and  ordered  a  patent  to  is- 
sue to  him,  and  after  the  return  of  the  order,  but  before 
the  issue  of  the  patent,  another  interference  was  declared 
between  the  same  application  and  the  patent  issued  to  A 
B  W,  and  the  chief  justice,  upon  appeal,  held  this  last  in- 
terference wrongfully  declared,  and  peremptorily  ordered 
the  issue  of  the  patent  in  pursuance  of  his  first  order, 
which  was  done,  it  was  held,  that  the  chief  justice 
erred,  and  .that  the  patent  issued  in  accordance  with  his 
last  order  was  without  authority  and  void,  and  should  be 
enjoined.  (Potter  v.  Dixon,  2  Fish.,  381.) 

After  closing  the  time  for  taking  testimony  in  an  in- 
terference the  Commissioner  may  admit  another  party  to 
the  interference  and  open  the  further  taking  of  testi- 
mony. (Laidleyv.  James,  MS.  Appeal  Cases,  1860.) 

316.  ABANDONMENT  IN  INTERFERENCE  CASES. — In  the 
case  of  Rowley  v.  Mason,  (MS.  Appeal  Cases,  I).  C.,  1869,) 
Mr.  Justice  Fisher  says :  "  In  this  case  two  issues  are 
presented  :  one  of  fact,  the  other  of  law.  The  question 
of  fact,  is  whether  Mason  or  Rowley  was  really  the  prior 
inventor  of  the  device  in  controversy;  and  the  question 
of  law  is  whether,  supposing  Mason  to  have  been  the 
first  discoverer  in  point  of  fact,  he  has  not  forfeited 
his  right  to  a  patent  by  reason  of  having  slept  for  years 
on  his  invention. 

"  Upon  a  careful  consideration  of  all  the  testimony  in 
the  case,  I  have  come  to  the  conclusion,  though  with 
much  hesitation,  that  Mason  invented  the  device  claimed 
in  this  case  in  the  year  1859,  and  reduced  his  invention 
to  a  fixed,  positive,  and  practical  form,  and  is  therefore 
the  first  inventor. 

"I  now  proceed  to  the  inquiry  whether  he  has  or  has 


484        PROCEDURE  IN  THE  PATENT  OFFICE. 

not  forfeited  his  right  to  a  patent  as  against  a  subse- 
quent, independent  inventor,  for  there  is  no  question  in 
my  mind  that  Rowley  is  such. 

"Mason  perfected  his  invention  in  1859,  but  failed  to 
file  his  application  until  January,  1868,  a  period  of  about 
nine  years  thus  intervening  between  the  time  of  the 
perfection  of  his  invention  and  the  making  of  his  appli- 
cation for  letters  patent. 

"In  the  meantime,  to  wit,  during  the  year  1866,  Row- 
ley, without  any  knowledge,  so  far  as  appears  to  us,  of 
the  invention  having  been  made  by  Mason,  perfects  the 
identical  device  which  Mason  had  perfected  seven  years 
previously,  and  files  his  application  November  26,  1867. 
Rowley  seems  not  to  have  lost  any  time  unnecessarily  in 
making  his  claim,  and  undoubtedly  would  have  been 
entitled  to  his  patent  if  the  device  had  never  been  in- 
vented by  Mason.  So,  if  Mason  had  not  perfected  his 
invention,  Rowley  would  undoubtedly  have  been  entitled 
to  a  patent  over  him.  No  principle  of  patent  law  is  bet- 
ter settled  than  that  which  was  declared  by  Justice 
Story  in  the  case  of  Woodcock  v.  Parker,  (1  Story,  590,) 
wherein  he  says :  '  In  a  race  of  diligence  between  two 
independent  inventors,  he  who  first  reduces  his  inven- 
tion to  a  fixed,  positive,  and  practical  form  would  seem 
to  be  entitled  to  aright  to  a  patent  therefor.'  This  prin- 
ciple is  founded  in  sound  policy.  The  great  object  of 
the  patent  law  is  the  promotion  of  the  arts  and  sciences 
as  rapidly  as  possible,  by  means  of  holding  out  to  in- 
ventors an  exclusive  monopoly  in  their  inventions  for  a 
limited  term,  and  the  principle  laid  down  by  Justice 
Story  conforms  to  the  spirit  of  our  "patent  system.  "Were 
it  otherwise  than  he  decided,  inventors  would  sleep  upon 


INTERFERENCE.  485 

their  inchoate  inventions,  and  put  off  their  reduction  to 
practical  form  to  a  more  convenient  season ;  the  result 
of  which  would  be,  in  many  instances,  the  loss  of  useful 
inventions  and  improvements  which  they  had  begun 
and  might  well  have  perfected,  whilst  other  inventors 
would  be  deterred  from  expending  their  money  and 
brain-work  in  perfecting  inventions  by  the  apprehension 
that  some  more  sluggish  genius  might  step  in  and  antici- 
pate the  fruits  of  their  labors  at  the  eleventh  hour.  The 
same  sound  policy  seems  to  me  to  require  that,  as  be- 
tween two  independent  inventors,  the  one  who  has  per- 
fected his  invention,  but  chooses  to  sleep  upon  it  for  nine 
years,  or  even  a  less  period,  and  is  only  aroused  from 
his  slumbers  by  the  application  of  a  subsequent  inventor 
for  his  patent,  has  no  right  to  complain  if  that  applica- 
tion should  meet  with  success.  It  is  also  well  settled 
that  he  who  has  abandoned  an  invention,  even  after  it 
has  been  perfected,  and  dedicates  it  to  the  public,  no 
matter  for  what  reason,  the  dedication  cannot  be  re- 
called. (See  Ransom  v.  Mayor  of  New  York,  1  Fish.,  252.) 
"In  the  case  of  Adams  v.  Jones,  (1  Fish.,  527,)  it  was 
decided  that  a  man  might  justly  be  treated  as  having 
abandoned  his  application  for  a  patent  if,  by  reason  of 
laches  on  his  part,  his  application  was  not  prosecuted 
with  reasonable  diligence.  In  White  v.  Allen,  (2  Fish., 
440,)  it  was  decided  that  when  an  invention  is  volunta- 
rily broken  up  and  laid  aside,  without  any  controlling 
impediment  in  the  way  of  an  application  for  a  patent, 
and  no  other  in  the  mean  time  invents  the  same  thing, 
without  any  knowledge  of  that  which  is  so  suspended, 
and  reduces  the  same  to  practice,  applies  for  and  takes 
out  his  patent,  and  introduces  the  patented  invention  to 
41* 


486  PKOCEDURE  IN  THE  PATENT  OFFICE. 

public  use,  he  must  be  regarded  as  the  original  and  first 
inventor  of  the  improvement. 

"These  decisions  are  all  founded  upon  the  same  sound 
policy  to  which  I  have  alluded.  It  is  true  that  the  law 
looks  with  indulgence  upon  delays  which  arise  from  the 
circumstances  of  parties  who  may  make  an  invention, 
but  it  is  equally  true  that  when  the  invention,  although 
perfected,  has  been  intentionally  abandoned  or  neglected, 
or  the  parties  show  by  their  acts  that  they  have  not  done 
all  that  they  can  do,  the  law  declares  that  they  shall  not 
be  protected.  (See  Sayles  v.  Chicago  and  Northwestern 
Railroad  Company,  2  Fish.,  523.) 

"In  this  case  I  fail  to  see  any  reason  why  Mason  could 
not  have  prosecuted  his  claim  for  a  patent  as  well  in 
1860  or  1861  as  after  Rowley  had  filed  his  application. 
He  has  certainly  been  guilty  of  laches  in  so  long  sleep- 
ing upon  his  invention,  and  I  can  account  for  his  neglect 
in  no  other  way  than  upon  the  ground  that  he  has  aban- 
doned it.  It  would  certainly  be  bad  policy  if,  after  the 
space  of  nine  years  from  the  perfection  of  an  invention, 
during  all  which  time  it  was  kept  a  secret  in  the  brain 
of  the  inventor,  he  might  come  into  the  Patent  Office 
and  defeat  the  claim  of  a  subsequent  and  independent 
inventor,  who,  honestly  believing  himself  to  have  been 
the  first  discoverer  of  the  improvement,  had  invested 
his  whole  estate  in  an  honest  effort  to  give  to  the  public 
the  benefit  of  his  labors.  If  one  might  lie  by  quietly 
for  nine  years,  he  might  do  so  for  forty.  Such  a  rule  of 
law,  we  may  readily  see,  so  far  from  tending  to  encour- 
age the  promotion  of  the  arts  and  sciences,  would  tend 
greatly  to  its  discouragement,  because  no  man  would 
feel  safe  against  the  dishonest  practices  of  the  marauder 


INTERFERENCE.  487 

or  pirate,  who  would  not  find  it  difficult  to  procure,  for 
a  reward,  witnesses  enough  to  swear  up  his  priority,  and 
fix  a  period  of  discovery  which  the  honest  inventor 
would  find  it  hard  enough  to  disprove. 

"It  is  admitted  by  Mason  that  if  the  patent  for  the 
device  in  question  had  been  obtained  by  Rowley,  his 
(Mason's)  claim  for  a  patent  could  not  properly  have 
been  allowed.  But  I  can  see  no  reason  for  the  distinc- 
tion between  the  case  when  the  patent  has  been  obtained 
by  the  subsequent  and  independent  inventor,  and  a  case 
of  a  pending  application  of  the  latter.  What  is  the  rea- 
son why  the  obtaining  of  a  patent  by  a  subsequent 
inventor  should  operate  to  prevent  the  issuing  of  a  pat- 
ent to  the  original  inventor  sleeping  for  years  on  his 
discovery?  It  certainly  cannot  be  because  of  the  obtain- 
ing of  the  patent  per  se,  for  a  patent  may  issue  to  one, 
and  if  afterwards  application  is  made  by  another,  who 
can  show  himself  to  be  the  prior  inventor,  and  not  in 
fault  in  making  his  application  after  the  first  patent  had 
been  issued,  the  obtaining  of  the  first  patent  would  be 
no  impediment  to  his  obtaining  a  second.  There  must 
be  therefore  some  other  reason,  and  I  find  that  reason 
sound  in  policy  which  dictates  that  inventors  should  not 
be  allowed  to  play  the  part  of  the  dog  in  the  manger, 
by  putting  aside  their  inventions  and  keeping  them  a 
secret  from  the  world  for  a  long  period  of  years,  and 
only  bringing  them  to  light  when  they  have  learned  that 
some  other  inventor  has  made  the  identical  discovery, 
and  is  about  to  benefit  himself  and  the  world  by  making 
it  public. 

"To  my  mind  there  can  be  no  stronger  evidence  of 
an  intention  to  abandon  an  invention  than  breaking  it 


488  PROCEDURE  IN  THE  PATENT  OFFICE. 

in  pieces  or  throwing  it  aside,  and  thus  neglecting  it  for 
a  period  of  nine  years. 

"  For  these  reasons  the  decision  of  the  Commissioner 
of  Patents  is  reversed,  arid  it  is  ordered  that  a  patent  be 
issued  to  S.  B.  Rowley  for  the  invention  in  controversy." 

In/ the  case  of  Erbe  v.  Hill  the  Commissioner  says: 
"Hill  applied  for  a  patent  in  April,  1862,  and  obtained 
it  in  the  following  July.  Erbe  applied  for  a  patent  in 
October,  1864,  more  than  two  years  after  the  issue  of 
the  patent  to  Hill.  The  issue  of  letters  patent  is  a  pub- 
lic act,  of  which  Erbe  was  bound  to  take  notice;  and 
therefore,  in  contemplation  of  law,  he  knew  of  the  issue 
of  Hill's  patent,  and  delayed  his  application  for  more 
than  two  years  afterward.  He  now  proves  his  own  in- 
vention to  have  taken  place  in  December,  1860,  but 
offers  no  excuse  for  his  protracted  delay  in  applying  for 
a  patent. 

"  If  there  be  such  a  thing  as  a  race  of  diligence  be- 
tween two  inventors,  Erbe  has  long  ago  been  distanced; 
if  there  be  such  a  thing  as  laches,  he  has  been  guilty  of 
it.  If  these  reasons  were  not  fatal  to  his  claim,  it  is  suf- 
ficient to  say  that  his  case  is  not  distinguishable,  on  prin- 
ciple, from  that  of  Rowley  v.  Mason,  decided  by  Mr.  Jus- 
tice Fisher  in  May  last,  and,  upon  the  authority  of  that 
case,  his  application  must  be  denied. 

"The  decision  of  the  board  of  examiners-in-chief  is 
affirmed."  (Commissioners'  Decisions,  1869,  p.  29.) 

The  decision  of  the  Commissioner  in  the  case  of  Erbe 
v.  Hill  was  affirmed  by  Mr.  Justice  Fisher.  The  learned 
judge  says:  "Erbe  seems  to  have  completed  his  inven- 
tion in  December,  1860,  and  then  to  have  slept  upon  it 
until  1864,  nearly  four  years.  Meanwhile  Hill,  independ- 


INTERFERENCE.  489 

ently,  perfects  the  same  invention  in  the  early  part  of 
the  year  1862,  and  immediately  offers  it  to  the  public  by 
applying  for  letters  patent,  which  were  granted.  More 
than  two  years  after  Hill  had  taken  out  his  patent  Erbe 
awakes  from  his  slumbers  and  claims  priority  of  inven- 
tion. It  is  too  late.  It  is  against  the  spirit  of  our  patent 
system,  and  would  be  subversive  of  its  policy,  if  men  are 
allowed  to  wait  for  years  after  others— independent ,  though 
subsequent  inventors — have  taken  out  letters  patent,  and 
then,  finding  those  letters  patent  to  be  valuable,  to  estab- 
lish priority,  after  having  slept  so  long  with  their  inven- 
tions buried  to  the  woTld.  The  cases  of  Rowley  v.  Mason 
and  Carlion  and  Merrill  v.  Aiwood,  lately  decided  by  me, 
are  directly  in  point.''  (Erbe  v.  Hill,  MS.  Appeal  Cases, 
D.  C.,  1869.) 

It  would  appear  from  the  decisions  of  Mr.  Justice 
Fisher,  in  the  cases  of  Rowley  v.  Mason  and  Erbe  v.  Hill, 
above  cited,  that  if  an  applicant,  with  no  sufficient  im- 
pediment in  the  way,  delays  to  apply  for  two  years  after 
a  patent  for  his  invention  has  issued  to  another,  he  for- 
feits his  title. 

Where  there  has  not  been  a  public  use,  and  there  is  no 
proof  of  abandonment  in  fact,  it  should  not  be  presumed 
against  the  first  applicant  on  account  of  mere  delay  in 
making  an  application.  (  Woerd  v.  Bacon,  Commissioners' 
Decisions,  1869,  p.  16.)  Affirmed  by  Mr.  Justice  Fisher. 
(MS.  Appeal  Cases,  D.  C.,  1869.) 

Three  and  a  half  years'  delay  in  applying  for  a  patent, 
after  another  person  has  obtained  one  for  tfee  same  in- 
vention, cannot  be  excused  by  sickness,  if  the  applicant 
has  been  attending  mean  while  to  other  business.  ( Wheeler 
v.  Chenoweth  £  Merrill,  Commissioners'  Decisions,  1869,  p. 


490  PROCEDURE  IN  THE  PATENT  OFFICE. 

43.)  Affirmed  by  Mr.  Justice  Fisher.  (MS.  Appeal  Cases, 
D.  C.,  1869.) 

An  inventor  who  made  a  drawing  of  his  invention,  but 
took  no  further  steps  for  six  years,  when  he  filed  his  ap- 
plication, cannot  prevail  against  his  competitor,  who  had, 
in  the  mean  time,  devised  it  and  obtained  a  patent.  ( Wood 
v.  Crowell,  Commissioners'  Decisions,  1869,  p.  107.) 

In  the  case  of  Merrill  v.  Atwood,  a  lamp  burner,  em- 
bodying the  device  in  controversy,  was  held  to  be  an 
abandoned  experiment,  it  having  been  prepared  to  test 
another  invention,  and  after  being  used  several  evenings 
laid  aside  for  years,  until  the  interference  was  declared. 
( Commissioners'  Decisions,  1869,  p.  6,  affirmed,  MS.  Appeal 
Cases,  D.  C.,  1869.) 

In  the  case  of  Mason  ex  parte,  MS.  Appeal  Cases,  D.  C., 
1870,  the  following  question  was  submitted:  "Whether 
the  proposition  in  regard  to  laches  of  the  applicant,  John 
L.  Mason,  was  intended  to  apply  to  the  case  of  an  ex  parle 
application  with  the  same  effect  as  when  the  rights  of  an 
adverse  claimant  were  likely  to  be  affected  by  such 
laches?"  In  deciding  this  question,  Mr.  Justice  Fisher 
says:  "In  reply  to  the  second  question,  I  have  to  say, 
that  the  case  before  me  being  that  of  adverse  claimants, 
the  proposition  in  regard  to  laches  had  reference  and  was 
intended  to  apply  to  such  cases  only,  and  not  to  the 
case  of  an  ex  parte  application.  The  view  which  I  enter- 
tain on  the  subject  of  laches  is  simply  this:  that  the  in- 
ventor who  conceals  his  invention,  or  fails  to  take  the 
steps  necessary  to  secure  his  patent  therefor,  does  so  at  the 
risk  of  being  postponed  in  his  claim  by  the  corning  in  of  a 
subsequent  independent  inventor,  who  is  diligent  in  giv- 
ing the  world  the  benefit  of  his  invention,  just  as  he 


INTERFERENCE.  491 

takes  the  risks  of  losing  the  benefits  of  his  invention  by 
consenting  to  or  allowing  its  public  sale  or  use  for  the 
time  fixed  in  the  act  of  Congress  as  a  bar  against  him. 
If  he  conceals  his  invention  for  any  length  of  time, no 
matter  how  long,  and  it  does  not  get  into  public  use  or 
on  sale  for  more  than  two  years  by  his  consent  or  allow- 
ance, and  it  is  not  subsequently  invented  by  another,  who 
applies  before  him,  and  there  is  reasonable  grounds  to 
believe  that  he  did  not  abandon  it,  I  do  not  suppose  that 
lapse  of  time  per  se  would  be  cause  for  refusing  his  appli- 
cation for  a  patent." 

317.  CLASSES  INTO  WHICH  CASES  OF  INTERFERENCE  MAY 
BE  DIVIDED. — Cases  of  interference  may  be  naturally 
divided  into  two  leading  classes.  The  first  comprises 
those  in  which  the  applicants  are  both  original  and  inde- 
pendent inventors,  and  the  only  question  left  for  decision 
is,  which  was  the  first  inventor  ?  The  parties,  in  this  class 
of  cases,  may  be,  and  usually  are,  widely  separated;  they 
have  no  connection  whatever  with  each  other.  The  co- 
incidence of  invention  is  accidental,  or  rather  results 
from  the  fact  that  the  new  improvement  is  one  which  is 
demanded  by  the  state  of  arts,  and  one  which  many  men 
are  seeking,  at  the  same  time,  to  discover  or  develop. 

The  question  of  priority  in  such  cases  is  usually  one  of 
easy  solution.  It  is  to  be  determined  by  ascertaining 
which  of  the  parties  first  reduced  the  invention  to  a  prac- 
ticable form,  either  by  a  drawing,  sufficient  of  itself  to 
enable  an  artisan  to  make  the  thing  invented,  or  by  a 
sketch,  accompanied  by  written  description,  or  by  model, 
or  full-sized  machine.  In  such  cases,  mere  conversations, 
as  proof  of  invention,  however  explicit  in  detail,  should 
not  be  accepted,  unless  such  conversations  consisted  of 


492  PROCEDURE  IN  THE  PATENT  OFFICE. 

directions  to  workmen  to  enable  them  to  construct  a  ma- 
chine which  was  actually  built  at  the  time  and  from  such 
directions. 

The  second  class  of  interference  comprises  those  cases 
in  which  two  men  have  been  more  or  less  connected  in 
the  work  of  invention;  where  the  relation  of  partner,  or 
employer  and  employee,  or  friend  or  fellow-workman,  has, 
iii  some  form,  existed;  where  the  invention,  if  it  be  the 
act  of  both,  takes  place  at  or  about  the  same  time;  and 
where  the  real  question  is  not  so  much  one  of  priority,  but 
of  origin ality;  where,  in  short,  it  is  charged  or  inferred 
that  one  of  the  parties  is  claiming  that  which  he  has 
stolen  from  the  other.  This  class  may  be  again  subdi- 
vided into  three:  First,  where  the  parties  are  fellow- 
townsmen  or  workmen,  or  so  situated  that  either  might 
have  known  of  the  movements  of  the  other;  second, 
where  one  party  is  in  the  general  employment  of  the 
other,  and  in  the  course  of  his  work  has  hit  upon  some 
improvement  in  the  tools  or  processes  with  which  he 
works;  third,  where  the  one  has  been  specially  employed 
by  the  other  to  assist  in  developing  or  embodying  the  very 
invention  in  controversy.  The  cases  which  fall  within 
the  second  class  are  by  far  the  most  difficult.  The  testi- 
mony is  usually  contradictory,  and  the  parties,  surrounded 
by  a  troop  of  partisans,  clerks,  or  workmen,  appear,  and, 
like  the  seamen  of  opposing  vessels  in  a  collision  case, 
swear  directly  in  each  other's  faces.  Each  is  at  pains  to 
deny  every  fact,  material  and  immaterial,  asserted  by  the 
other,  until  the  judge  is  compelled  to  grope  painfully 
through  a  mass  of  contradictory  evidence  to  find  some 
fact,  as  a  basis  for  a  decision,  which  has  escaped  the  fury 
of  the  conflict.  There  may  be  some  presumptions  which 


INTERFERENCE.  493 

will  render  it  possible  to  approximate  to  the  truth.  It 
may  be  said,  in  general,  that  in  cases  falling  under  the 
first  subdivision,  the  evidence  necessary  to  establish  pri- 
ority should  be  substantially  the  same  as  in  cases  of  the 
first  class,  to  wit,  that  he  is  the  first  inventor  who  has  first 
reduced  the  invention  to  practice.  As  to  the  second  and 
third  subdivisions,  it  may  be  safely  asserted  that  the  pre- 
sumption is  that  the  workman  is  the  inventor  in  the  for- 
mer case,  and  that  the  employer  is  in  the  latter. 

When  workmen  are  emploj*edin  large  establishments, 
it  is  a  natural  and  common  mistake  for  employers  to  sup- 
pose that  they  are  entitled  to  the  brain-work  as  well  as 
the  hand-work  of  their  employees;  that  if  a  valuable  in- 
vention is  made,  as  in  some  measure  it  is  the  product  of 
their  capital  and  of  the  mind  of  their  servant,  they  have 
acquired  such  a  title  to  it  as  to  be  able  to  consider  them- 
selves the  inventors.  This  is  especially  the  ease  when  the 
emplo}"er  has  conversed  with  the  workmen  during  the 
progress  of  the  work,  or  has  exhibited  any  interest  in  its 
successful  completion.  They  confound  the  supply  of 
material  with  the  supply  of  ideas,  and  sometimes  confi- 
dently claim  to  be  the  inventors  of  mechanism  which  they 
would  find  it  difficult  to  describe  and  impossible  to  ope- 
rate. 

But  where  a  man  has  conceived  an  idea  and  given  to 
it  more  or  less  development,  and  employs  a  mere  work- 
man to  put  it  into  shape,  it  is  obvious  that  much  confusion 
is  likely  to  follow,  proportioned  to  the  mechanical  skill 
of  the  workman  and  the  lack  of  it  in  the  projector.  So 
many  suggestions  and  hints  may  be  furnished  by  the 
workman,  that  at  last  he  ceases  to  remember  the  parent- 
age of  the  underlying  idea,  and  fancies  that  the  whole 

42 


494 


PROCEDURE  IN  THE  PATENT  OFFICE. 


machine  is  the  product  of  his  own  invention.  It  must  be 
rare,  however,  in  such  cases,  that  the  labors  of  the  me- 
chanic or  model-maker  can  raise  him  to  a  higher  rank 
than  that  of  joint  inventor  with  him  who  has  the  original 
conception,  while,  in  the  great  majority  of  cases,  the  safer 
rule  is  undoubtedly  that  adopted  by  the  Supreme  Court 
of  the  United  States  in  the  late  case  of  Agawam  Woolen 
Company  v.  Jordan,  (7  Wall.,  583,)  where  it  is  said :  "  "When 
a  person  has  discovered  an  improved  principle  in  a  machine, 
manufacture,  or  composition  of  matter,  and  employs  other 
persons  to  assist  him  in  carrying  out  that  principle,  and 
they,  in  the  course  of  experiments  arising  from  that  em- 
ployment, make  valuable  discoveries  ancillary  to  the  plan 
and  preconceived  design  of  the  employer,  such  suggested 
improvements  are,  in  general,  to  be  regarded  as  the  prop- 
erty of  the  party  who  discovered  the  original  improved 
principle,  and  may  be  embodied  in  his  patent  as  a  part 
of  his  invention."  (Foster  v.  Foiule,  Commissioners'  Decis- 
ions, 1869,  p.  35.) 


XIX.   Affidavits  and  Depositions. 


SEC. 

318.  Commissioner    may   establish 

rules. 

319.  Before  whom  taken. 

320.  Clerk  to  issue  subpena. 

321.  Penalty  for  refusing  to  appear 

and  testify. 

322.  Rules  of  the  Patent  Office. 

323.  Notice. 

324.  Certified  copy  of  caveat. 

325.  Evidence  to  be  sealed,  &c. 

326.  Ex  parte  testimony. 


SEC. 

327.  Notice  of  objection. 

328.  Force  and  effect  of  rules. 

329.  Service  of  notice  for  taking  tes- 

timony. 

330.  Object  and  requisites  of  notice. 

331.  How  testimony  is  to  be  taken. 

332.  Magistrate's  certificate. 

333.  Formal  objections. 

334.  Access  to  testimony  ;  copies. 

335.  Cannot  be  taken  before  inter- 

ested parties. 


AFFIDAVITS  AND  DEPOSITIONS.  495 


SEC. 

336.  Testimony  received  by  agree- 

ment of  parties. 

337.  Testimony  taken  on  former  in- 


SEC. 

339.  Postponement. 

340.  Form  of  notice  of  taking  tes- 

timony. 


terference.  i  341.  Form  of  deposition. 

338.  Assignment  of  time.  I  342.  Form  of  certificate. 


318.  COMMISSIONER  MAY  ESTABLISH  RULES  FOR  TAKING 
AFFIDAVITS  AND  DEPOSITIONS. — The  Commissioner  may 
establish  rules  for  taking  affidavits  and  depositions.    (Act 
of  July  8, 1870,  §  43.) 

319.  BEFORE  WHOM  TAKEN. — And  such  affidavits  and 
depositions  may  be  taken  before  any  officer  authorized 
by  law  to  take  depositions  to  be  used  in  the  courts  of 
the  United  States,  or  of  the  State  where  the  officer 
resides.     (Ib.} 

As  to  what  officers  are  authorized  to  administer  oaths 
vide  supra,  p.  318. 

320.  CLERK  TO  ISSUE  SUBPENA. — The  clerk  of  any 
court  of  the  United  States  for  any  district  or  Territory 
wherein  testimony  is  to  be  taken  for  use  in  any  contested 
case  pending  in  the  Patent  Office,  shall,  upon  the  appli- 
cation of  any  party  thereto,  or  his  agent  or  attorney, 
issue  subpena  for  any  witness  residing  or  being  within 
said  district  or  Territory,  commanding  him  to  appear 
and  testify  before  any  officer  in  said  district  or  Territory, 
authorized  to  take  depositions  and  affidavits,  at  any  time 
and  place  in  the  subpeua  stated.     (/£>.,  §  44.) 

321.  PENALTY  FOR  REFUSING  TO  APPEAR  AND  TESTIFY. 
If  any  witness,  after  being  duly  served  with  such  sub- 
pena, shall  neglect  or  refuse  to  appear,  or,  after  appear- 
ing, shall  refuse  to  testify,  the  judge  of  the  court  whose 
clerk  issued  the  subpena  may,  on  proof  of  such  neglect 


496  PROCEDUKE  IN  THE  PATENT  OFFICE. 

or  refusal,  enforce  obedience  to  the  process,  or  punish 
the  disobedience  as  in  other  like  cases.  (Ib.) 

A  person  who,  after  being  regularly  served  with  a  sub- 
pena, refuses  or  neglects  to  attend  the  trial,  may  be  pro- 
ceeded against  by  attachment.  It  is  presumed  also  that 
an  action  on  the  case  may  be  maintained  against  him; 
but  before  an  attachment  will  be  granted  it  must  appear 
that  the  subpena  was  personally  served  upon  him  a  rea- 
sonable time  before  the  trial,  and  that  the  fees  allowed 
by  law  were  paid  or  tendered  to  him. 

In  the  courts  of  the  United  States  witnesses  are  enti- 
tled to  the  sum  of  one  dollar  and  fifty  cents  for  each 
day's  attendance  at  the  court,  to  the  further  sum  of  five 
cents  per  mile  for  traveling  from  their  place  of  abode  to 
the  place  where  the  court  is  holden,  and  to  the  like 
allowance  for  returning.  (Act  of  February  26,  1853,  c. 
80.)  The  sum,  therefore,  which  it  is  necessary  to  tender 
upon  serving  a  subpena  is  one  dollar  and  fifty  cents  for 
one  day's  attendance,  and  ten  cents  for  each  mile  of  dis- 
tance between  the  residence  of  the  witness  and  the  place 
where  the  court  is  to  be  held.  (Conkliris  Treatise,  386.) 

322.  RULES  OF  THE  PATENT  OFFICE  FOR  TAKING  AND 
TRANSMITTING   EVIDENCE. — In   interference,  extension, 
and  other  contested  cases  the  following  rules  have  been 
established  for  taking  and  transmitting  evidence : 

323.  NOTICE. — First.  That,  before  the  deposition  of  a 
witness  or  witnesses  be  taken  by  either  party,  due  notice 
shall  be  given  to  the  opposke  party,  as  hereinafter  pro- 
vided, of  the  time  and  place  when  and  where  such  depo- 
sition or  depositions  will  be  taken,  with  the  names  and 
residences  of  the  witness  or  witnesses  then  and  there  to 
be  examined,  so  that  the  opposite  party,  either  in  person 


AFFIDAVITS  AND  DEPOSITIONS.  497 

or  by  attorney,  shall  have  full  opportunity  to  cross- 
examine  the  witness  or  witnesses :  Provided,  That  if  the 
opposite  party  or  his  counsel  be  actually  present  at  the 
taking  of  testimony,  witnesses  not  named  in  the  notice 
may  be  examined,  but  not  otherwise.  And  such  notice 
shall,  with  proof  of  service  of  the  same,  be  attached  to  the 
deposition  or  depositions,  whether  the  party  cross-exam- 
ine or  not ;  aud  such  notice  shall  be  given  in  sufficient 
time  for  the  appearance  of  the  opposite  party. 

324.  CERTIFIED  COP^  OF  CAVEAT. — Second.  That,  when- 
ever a  party  relies  upon  a  caveat  to  establish  the  date  of 
his  invention,  a  certified  copy  thereof  must  be  filed  in 
evidence,  with  due  notice  to  the  opposite  party,  as  no 
notice  can  be  taken  by  the  office  of  a  caveat  filed  in  its 
secret  archives. 

325.  EVIDENCE  TO  BE  SEALED,  &c. — Third.   That  all 
evidence,  &c.,  shall  be  sealed  up,  entitled  upon  the  envel- 
ope with  the  name  of  the  case  in  which  it  is  taken, 
and  addressed  to  the  Commissioner  of  Patents  by  the 
person  before  whom  it  shall  be  taken,  and  so  certified 
thereon,  and  forwarded,  immediately  upon  the  close  of  the 
examination,  to  the  Patent  Office. 

326.  Ex  PARTE  TESTIMONY. — Fourth.  In  cases  of  ex- 
tension, where  no  opposition  is  made,  ex  parte  testimony 
will  be  received  from  the  applicant;  and  such  testimony 
as  may  have  been  taken  by  the  applicant  prior  to  notice 
of  opposition  shall  be  received,  unless  taken  within  thirty 
days  after  filing  the  petition  for  the  extension ;  Provided, 
That  immediately  upon  receiving  notice  of  opposition 
the  applicant  shall  give  notice  to  the  opposing  party  or 
parties  of  the  names  and  residences  of  the  witnesses 
whose  testimony  has  thus  been  taken. 

42* 


498          .  PROCEDURE  IN  THE  PATENT  OFFICE. 

327.  NOTICE  OF  OBJECTION. — Fifth.  That  no  evidence 
touching  the  matter  at  issue  will  he  considered  upon  the 
day  of  hearing  which  shall  not  have  been  taken  and  filed 
in  compliance  with  these  rules:  Provided,  Notice  of  the 
objection  has  been  given,  as  hereinafter  prescribed,  (vide 
infra,  §  314 :)  Provided  also,  That  if  either  party  shall  be 
unable,  for  good  and  sufficient  reasons,  to  procure  the 
testimony  of  a  witness  or  witnesses  within  the  stipulated 
time,  it  shall  be  the  duty  of  said  party  to  give  notice  of 
the  same  to  the  Commissioner  of  Patents,  accompanied 
by  statements,  under  oath,  of  the  cause  of  such  inability, 
and  of  the  names  of  such  witnesses,  and  of  the  facts  ex- 
pected to  be  proved  by  them,  and  of  the  steps  which  have 
been  taken  to  procure  said  testimony,  and  of  the  time  or 
times  when  efforts  have  been  made  to  procure  it;  which 
last-mentioned  notice  to  the  Commissioner  shall  be  re- 
ceived by  him  previous  to  the  day  of  hearing  aforesaid. 
(Patent  Office  Rules,  July,  1870.) 

328.  FORCE  AND  EFFECT  OF  PATENT   OFFICE  RULES. 
The  rules  and  regulations  of  the  Patent  Office,  as  to  taking 
testimony  in  cases  of  interference,  are  binding  upon  the 
parties,  and  each  is  entitled  to  the  benefits  of  them,  and, 
until  abrogated,  they  are  as  binding  upon  the  Commis- 
sioner himself  as  if  enacted  by  the  statute  itself.    (O'Hara 
v.  Haws,  MS.  Appeal  Oases,  D.  C.,  1859.) 

The  power  granted  to  the  Patent  Office  to  make  rules 
in  respect  to  the  taking  of  evidence  gives  no  new  right 
to  make  new  rules  of  evidence,  or  to  make  new  rules  of 
law,  or  to  divest  vested  rights  by  its  rules  of  practice. 
(Dyson  exparte,  ib.,  1860.) 

Evidence  taken  under  the  rules  established  by  the 
Commissioner  of  Patents,  under  the  statute,  must  not 


AFFIDAVITS  AND  DEPOSITIONS.  499 

only  be  taken  agreeably  to  these  rules,  but  must  be  evi- 
dence competent  in  law.  (Arnold  v.  Bishop,  ib.,  1841.) 

The  rules  referred  to  do  not  prohibit  the  Commissioner 
from  looking  into  the  deposition  informally  transmitted, 
or  reading  it  and  ascertaining  its  contents;  but  only  pro- 
hibit him  from  considering  it  as  evidence  touching  the 
matter  in  issue.  (Smith  v.  Flickenger,  ib.,  1843.) 

The  rules  of  the  Patent  Office  as  to  the  taking  of  testi- 
mony are  to  be  just  and  reasonable,  according  to  the 
established  principles  and  precedents  in  like  cases.  (Nich- 
ols v.  Harris,  ib.,  1854.) 

329.  SERVICE  OF  NOTICE  FOR  TAKING  TESTIMONY. — The 
notice  for  taking  testimony  must  be  served  by  deliver- 
ing a  copy  to  the  adverse  party,  or  his  agent  or  attorney 
of  record  or  counsel,  or  by  leaving  a  copy  at  the  party's 
usual  place  of  residence,  with  some  member  of  the  fam- 
ily who  has  arrived  at  the  years  of  discretion.  The  no- 
tice must  be  annexed  to  the  deposition,  with  a  certificate, 
duly  sworn  to,  stating  the  manner  and  time  in  which  the 
service  was  made.  (Patent  Office  Rales,  July,  1870.) 

Service  of  notice  to  take  testimony  may  be  made 
upon  applicant,  upon  the  opponent,  upon  the  attorney 
of  record  of  either,  or,  if  there  be  no  attorney  of  record, 
upon  any  attorney  or  agent  who  takes  part  in  the  service 
of  notice  or  the  examination  of  the  witnesses  of  either 
party.  "Where  notice  to  take  testimony  has  already  been 
given  to  an  opponent,  and  a  new  opponent  subsequently 
gives  notice  of  his  intention  to  oppose,  the  examination 
need  not  be  postponed,  but  notice  thereof  may  be  given 
to  such  subsequent  opponent  by  mail  or  by  telegraph. 
This  rule,  however,  does  not  apply  to  ex  parte  examina- 


500  PROCEDURE  IN  THE  PATENT  OFFICE. 

tions,  or  those  of  which  no  notice  has  been  given  when 
notice  of  opposition  is  served.     (Ib.} 

330.  OBJECT  AND  REQUISITES  OF  NOTICE. — The  object 
of  notice  is  to  bring  the  adverse  party  before  the  examin- 
ing officer.    Where  the  party  attends  before  such  officer, 
such  notice  is  mere  form  and  technicality.     ( Vide  infra, 
§  333 ;    Walker  v.  Forbes,  MS.  Appeal  Cases,  D.  C.,  1861.) 

Where  no  notice  of  the  taking  of  depositions  has  been 
given  to  the  opposite  party,  but  such  opposite  party  or 
his  counsel  are  present  when  they  are  taken,  such  depo- 
sitions will  not  be  excluded  because  of  want  of  notice, 
and  particularly  if  taken  by  consent  of  parties.  (Ib.) 

Depositions,  to  be  used  in  a  matter  of  interference  be- 
fore the  Commissioner  of  Patents,  taken  without  notice 
to  the  opposing  party,  cannot  be  used  against  him,  unless! 
he  has  waived  his  right  to  notice,  and  agreed  to  admit 
them  to  be  read  in  evidence.  (Perry  v.  Cornell,  ib.,  1847.) 

A  notice  of  taking  deposition  at  a  place  four  hundred 
miles  distant,  served  eleven  days  before  the  time  for 
taking  such  depositions,  is  sufficient.  (Smith  v.  Flickenger, 
ib.,  1843.) 

331.  How  TESTIMONY  is  TO   BE   TAKEN;   SIGNATURE. 
The  testimony  must,  if  either  party  desires  it,  be  taken 
in  answer  to  interrogatories,  having  the  questions  and 
answers  committed  to  writing  in  their  regular  order 
by  the  magistrate,  or,  under  his  direction,  by  some  per- 
son not  interested  in  the  issue,  nor  an  agent  or  attorney 
of  one  who  is.     The  deposition,  when  complete,  must  be 
signed  by  the  witness.     (Patent  Office  Rules,  July,  1870.) 

332.  MAGISTRATE'S  CERTIFICATE. — The  magistrate  must 
append  to  the  deposition  his  certificate,  stating  the  time 
and  place  at  which  it  was  taken,  the  names  of  the  wit- 


AFFIDAVITS  AND  DEPOSITIONS.  501 

nesses,  (if  any,)  the  administration  of  the  oath,  at  whose 
request  the  testimony  was  taken,  the  occasion  upon  which 
it  was  intended  to  be  used,  the  names  of  the  adverse  par- 
ties, and  whether  they  were  present.  (/6.)  If  the  magis- 
trate before  whom  a  deposition  is  taken  fails  to  certify 
thereon  that  it  was  sealed  up  by  him,  it  is  sufficient 
ground  for  excluding  such  deposition  from  the  consider- 
ation of  the  Commissioner.  (Arnold  v.  Bishop,  MS.  Ap- 
peal Cases,  D.  C.,  1841.) 

333.  FORMAL  OR  TECHNICAL  OBJECTION. — ~No  notice  will 
be  taken,  at  the  hearing,  of  any  merely  formal  or  tech- 
nical objection,  unless  it  shall  appear  to  have  wrought  a 
substantial  injury  to  the  party  raising  the  objection;  and 
even  then,  as  soon  as  the  party  becomes  aware  of  the  ob- 
jection, he  must  immediately  give  notice  thereof  to  the 
office,  and  also  to  the  opposite  party,  informing  him  at 
the  same  time  that,  unless  corrected,  he  shall  urge  his 
objection    at  the   hearing.     (Patent  Office  Rules,  July, 
1870.) 

334.  ACCESS   TO    TESTIMONY;    COPIES. — In    contested 
cases,  whether  of  interference  or  of  extension,  parties  may 
have  access  to  the  testimony  on  file  prior  to  the  hearing, 
in  presence  of  the  officer  in  charge;  and  copies  may  be 
obtained  by  them  at  the  usual  rates.     (Ib.) 

335.  DEPOSITION  CANNOT  BE  TAKEN  BEFORE  INTERESTED 
PARTIES. — Deposition  cannot  be  taken  before  a  magistrate 
or  person  who  is  the  attorney  or  of  counsel  for  either 
party,  or  interested  in  the  event  of  the  action.     (Nichols 
v.  Harris,  MS.  Appeal  Cases,  D.  C.,  1854.) 

The  officer  before  whom  testimony  is  taken  should 
stand  indifferent  between  the  parties,  in  no  such  relation 
to  either  of  them  as  to  bias  him  in  favor  of  one  more  than 


502  PROCEDURE  IN  THE  PATENT  OFFICE. 

the  other;  more  especially  he  should  not  be  interested  in 
the  question  at  issue.     (Collins  v.  White,  ib.,  1860.) 

336.  TESTIMONY  RECEIVED  BY  AGREEMENT  OF  PARTIES. 
By  agreement  of  parties,  the  testimony  of  witnesses, 
otherwise  incompetent,  may  be  received  and  considered. 
( Warner  v.  Goodyear,  ib.,  1846.) 

337.  TESTIMONY  TAKEN  ON  A  FORMER  INTERFERENCE  is 
ADMISSIBLE  ON  A  SECOND  ONE,  and  may  be  used  without 
being  retaken,  although  the  second  interference  is  de- 
clared after  an  assignment  to  another  party,  (Earns  v. 
Richards,  ib.,  December,  1859,")    or   after  application  is 
made  by  another  party,  and  he  is  made  a  party  to  the 
interference.     (Carter  v.  Carter,  ib.,  1855.) 

In  the  case  of  Crowell  v.  Sim,  the  Commissioner  says : 
"A  preliminary  question  is  made  as  to  an  agreement  be- 
tween the  parties  relating  to  the  introduction  of  testimony 
taken  in  a  former  interference.  The  agreement  is,  that 
the  testimony  may  be  read  by  the  examiner  in  the  present 
case.  Counsel  for  Crowell  claims  that  this  meant  nothing 
more  than  that  the  examiner  might  read  the  testimony, 
but  that  it  was  not  to  be  treated  as  evidence;  and  they 
further  assert  that  this  was  fully  understood  by  the  par- 
ties. Counsel  for  Sim  deny  this  understanding,  and  claim 
that  the  agreement  meant  and  means,  that  the  examiner 
should  read  the  former  testimony  as  evidence  in  this  case. 
As  the  parties  cannot  agree  as  to  their  verbal  statements, 
I  can  only  construe  the  paper  according  to  its  terms.  My 
opinion  is,  that  'reading'  the  testimony  can  only  mean 
reading  it  in  evidence.  Any  other  construction  would 
render  it  practically  without  meaning,  and  Sim  has  so  far 
relied  upon  his  own  understanding  of  it  as  to  take  no  other 
testimony."  (Commissioners'  Decisions,  July  26,  1870.) 


AFFIDAVITS  AND  DEPOSITIONS.  503 

338.  ASSIGNMENT  OF  TIME  IN  INTERFERENCE  CASES. — 
In  cases  of  interference  the  party  who  first  filed  so  much 
of  his  application  for  a  patent  as  illustrates  his  invention 
will  be  deemed  the  first  inventor  in  the  absence  of  all 
proof  to  the  contrary.     A  time  will  be  assigned  in  which 
the  other  party  shall  complete  his  direct  testimony;  and 
a  further  time  in  which  the  adverse  party  shall  complete 
the  testimony  on  his  side;  and  a  still  further  time  in 
which  both  parties  may  take  rebutting  testimony,  but 
shall  take  no  other.     If  there  are  more  than  two  parties, 
the  times  for  taking  testimony  shall  be  so  arranged,  if 
practicable,  that  each  shall  have  a  like  opportunity  in  his 
turn,  each  being  held  to  go  forward  and  prove  his  case 
against  those  who  filed  their  applications  before  him. 
(Patent  Office  Rules,  July,  1870.) 

339.  POSTPONEMENT. — If  either  party  wishes  the  time 
for  taking  his  testimony,  or  for  the  hearing,  postponed, 
he  must  make  application  for  such  postponement,  and 
must  show  sufficient  reason  for  it  by  affidavit  filed  before 
the  time  previously  appointed  has  elapsed,  if  practicable, 
and  must  also  furnish  his  opponent  with  copies  of  his 
affidavits  and  with  reasonable  notice  of  the  time  of  hear- 
ing his  application.     (J6.) 

340.  FORM  OF  NOTICE  OF  TAKING  TESTIMONY. — 

BOSTON,  MASS.,  March  29,  1869. 

In  the  matter  of  the  interference  between  the  application  of  Lyman  Osgood 
for  a  paper  collar  machine  and  the  patent  No.  85,038,  granted  Decem- 
ber 15,  1868,  to  Charles  Comstock,  now  pending  before  the  Commissioner 
of  Patents. 

SIR:  You  are  hereby  notified  that  on  Wednesday,  March  31,  1869,  at 
the  office  of  Sextus  Tarquin,  esq.,  No.  30  Court  street,  Boston,  Massachu- 
setts, at  9  o'clock  in  the  forenoon,  I  shall  proceed  to  take  the  testimony 
of  Truman  Truthful,  Peter  Pivot,  and  Welcome  Story,  all  of  Boston,  as 
witnesses  in  my  behalf. 


504  PROCEDURE  IN  THE  PATENT  OFFICE. 

The  examination  will  continue  from  day  to  day  until  completed.  Yon 
are  invited  to  attend  and  cross-examine. 

LYMAN  OSGOOD, 

By  PETER  PEOCTOB,  his  Attorney. 
CHAELES  COMSTOCK, 

Providence,  It.  I. 

Proof  of  service. 
Service  of  the  above  notice  acknowledged. 

CHARLES  COMSTOCK, 
By  CHARLES  CAVIL,  his  Attorney. 
PROVIDENCE,  R.  I.,  March  30,  1869. 

341.  FORM  OF  DEPOSITION. — 

Before  the  Commissioner  of  Patents,  in  the  matter  of  the  interference  be- 
tween the  application  of  Lyman  Osgood  for  a  paper  collar  machine  and 
the  letters  patent  No.  85,038,  granted  December  15,  1868,  to  Charles 
Corastock. 

Depositions  of  witnesses  examined  on  behalf  of  Lyman  Osgood,  pursuant 
to  the  annexed  notice,  at  the  office  of  Sextus  Tarquin,  No.  30  Court 
street,  Boston,  Massachusetts,  on  Wednesday,  March  31,  1869.  Present, 
Peter  Proctor,  esq.,  on  behalf  of  Lyman  Osgood,  and  Charles  Cavil,  esq., 
on  behalf  of  Charles  Comstock. 

Truman  Truthful,  being  duly  sworn,  (or  affirmed,)  doth  depose  and  say, 
in  answer  to  interrogatories  proposed  to  him  by  Peter  Proctor,  esq.,  coun- 
sel for  Lyman  Osgood,  as  follows,  to  wit: 

Question  1.  What  is  your  name,  age,  residence,  and  occupation? 
Answer  1.  My  name  is  Truman  Truthful;  I  am  forty-three  years  of 
age ;  I  am  a  manufacturer  of  paper  collars,  and  reside  in  Chelsea,  Massa- 
chusetts.     « 
Question  2,  &c. 

And  in  answer  to  cross-interrogatories  proposed  to  him  by  Charles  Cavil, 
esq.,  counsel  for  Charles  Comstock,  he  saith : 
Cross-question  1.  How  long  have  you  known  Lyman  Osgood? 
Answer  1. 

TRUMAN  TEUTHFUL. 

342.  FORM  OF  CERTIFICATE  OF  OFFICER. — 

COMMONWEALTH  OF  MASSACHUSETTS,  ) 
County  of  Suffolk.  ) 

At  Boston,  in  said  county,  on  the  26th  day  of  April,  A.  D.  1869,  before 
me  personally  appeared  the  above-named  Truman  Truthful,  and  made 


EVIDENCE. 


505 


oath  that  the  foregoing  deposition  by  him  subscribed  contains  the  truth, 
the  whole  truth,  and  nothing  but  the  truth.  The  said  deposition  is  taken 
at  the  request  of  Lyrnan  Osgood,  to  be  used  upon  the  hearing  of  an  inter- 
ference between  the  claims  of  the  said  Lyman  Osgood  and  those  of  Charles 
Comstock,  before  the  Commissioner  of  Patents,  on  the  3d  day  of  May,  A. 
D.  1869. 

The  said  Charles  Comstock  was  duly  notified,  as  appears  by  the  original 
notice  hereto  annexed,  and  attended  by  Charles  Cavil,  esq.,  his  counsel. 

SEXTUS  TABQUIN, 
Justice  of  the  Peace. 

The  magistrate  shall  seal  up  the  testimony,  and  write 
upon  the  envelope  a  short  certificate,  substantially  in  the 
following  form,  viz : 

I  hereby  certify  that  the  within  depositions  of  Truman  Truthful  and 
Peter  Pivot,  relating  to  the  matter  of  interference  between  Lyman  Osgood 
and  Charles  Comstock,  were  taken,  sealed  up,  and  addressed  to  the  Com- 
missioner of  Patents  by  me  this  26th  day  of  April,  A.  D.  1869. 

SEXTUS  TABQUIJT, 
Justice  of  the  Peace. 

XX.  Evidence. 


SEC. 

343.  Presumption. 

344.  Declaration  and  acts  of  parties. 

345.  Declaration  &c.,  third  parties. 

346.  Parol  and  secondary  evidence. 

347.  Patent  Office  records. 

348.  Evidence  of  abandonment. 

349.  Evidence  of  priority. 

350.  Evidence  of  prior  use. 


SEO. 

351.  Evidence  of  novelty  and  utility. 

352.  Examples  of  novelty  and  want 

of  novelty. 

353.  Examination  of  parties. 

354.  Parties    in    interference   cases 

may  testify. 

355.  Competency  of  witnesses. 

356.  Experts. 


343.  PRESUMPTION. — The  general  head  of  presump- 
tive evidence  is  usually  divided  into  two  branches, 
namely,  presumptions  of  law  and  presumptions  of  fact. 
Presumptions  of  law  consist  of  those  rules  which,  in 
certain  cases,  either  forbid  or  dispense  with  any  ulterior 
inquiry.  They  are  founded  either  upon  the  first  princi- 
43 


•"06  PROCEDURE  IN  THE  PATENT  OFFICE. 

pies  of  justice,  or  the  laws  of  nature,  or  the  experienced 
course  of  human  conduct  and  affairs,  and  the  connection 
usually  found  to  exist  between  certain  things.  The  gen- 
eral doctrines  of  presumptive  evidence  are  not  therefore 
peculiar  to  municipal  law,  but  are  shared  by  it  in  com- 
mon with  other  departments  of  science.  Thus,  the  pre- 
sumption of  a  malicious  attempt  to  kill  from  the  delib- 
erate use  of  a  deadly  weapon,  and  the  presumption  of 
aquatic  habits  in  an  animal  found  with  webbed  feet,  be- 
long to  the  same  philosophy,  differing  only  in  the  in- 
stance, and  not  in  the  principle,  of  its  application.  The 
one  fact  being  proved  or  ascertained,  the  other,  its  uni- 
form concomitant,  is  universally  and  safely  presumed.  It 
is  this  uniformly  experienced  connection  which  leads  to 
its  recognition  by  the  law  without  other  proof;  the  pre- 
sumption, however,  having  more  or  less  force  in  propor- 
tion to  the.universality  of  the  experience.  And  this  has 
led  to  the  distribution  of  presumptions  of  law  into  two 
classes,  namely,  conclusive  and  disputable.  (Greenleaf 
on  Evidence,  p.  21.) 

Conclusive,  or,  as  they  are  elsewhere  termed,  imper- 
ative or  absolute,  presumptions  of  law,  are  rules  deter- 
mining the  quantity  of  evidence  requisite  for  the  support 
of  any  particular  averment,  which  is  not  permitted  to  be 
overcome  by  any  proof  that  the  fact  is  otherwise.  They 
consist  chiefly  of  those  cases  in  which  the  long-experi- 
enced connection  before  alluded  to  has  been  found  so 
general  and  uniform,  as  to  render  it  expedient  for  the 
common  good  that  this  connection  should  be  taken  to 
be  inseparable  and  universal.  They  have  been  adopted 
by  common  consent,  from  motives  of  public  policy,  for 
the  sake  of  greater  certainty,  and  the  promotion  of  peace 


EVIDENCE.  507 

aiid  quiet  in  the  community;  and  therefore  it  is  that  all 
corroborating  evidence  is  dispensed  with,  and  all  oppos- 
ing evidence  is  forbidden.  (Ib.} 

The  second  class  of  presumptions  of  law,  answering 
to  the  prcesumptiones  juris  of  the  Roman  law,  which  may 
always  be  overcome  by  opposing  proof,  consists  of  those 
termed  disputable  presumptions.  These,  as  well  as  the 
former,  are  the  result  of  the  general  experience  of  a  con- 
nection between  certain  facts  or  things,  the  one  being 
usually  found  to  be  the  companion  or  the  effect  of  the 
other.  The  connection,  however,  in  this  class,  is  not  so 
intimate  or  so  universal  as  to  render  it  expedient  that 
it  should  be  absolutely  and  imperatively  presumed  to 
exist  in  every  case,  all  evidence  to  the  contrary  being 
rejected;  but  yet  it  is  so  general,  and  so  nearly  universal, 
that  the  law  itself,  without  the  aid  of  a  jury,  infers  the 
one  fact  from  the  proved  existence  of  the  other,  in  the 
absence  of  all  opposing  evidence.  In  this  mode  the  law 
defines  the  nature  and  amount  of  the  evidence  which  it 
deems  sufficient  to  establish  a  prima  facie  case,  and  to 
throw  the  burden  of  proof  on  the  other  party;  and  if  no 
opposing  evidence  is  offered,  the  jury  are  bound  to  find 
in  favor  of  the  presumption.  A  contrary  verdict  would 
be  liable  to  be  set  aside,  as  being  against  evidence.  (J6., 
p.  38.) 

Presumptions  of  fact,  usually  treated  as  composing 
the  second  general  head  of  presumptive  evidence,  can 
hardly  be  said,  with  propriety,  to  belong  to  this  branch 
of  the  law.  They  are,  in  truth,  but  mere  arguments,  of 
which  the  major  premise  is  not  a  rule  of  law ;  they  be- 
long equally  to  any  and  every  subject-matter;  and  are  to 
be  judged  by  the  common  and  received  tests  of  the  truth 


508  PROCEDURE  IN  THE  PATENT  OFFICE. 

of  propositions  and  the  validity  of  arguments.  They 
depend  upon  their  own  natural  force  and  efficacy  in  gen- 
erating belief  or  conviction  in  the  mind,  as  derived  from 
those  connections  which  are  shown  by  experience,  irre- 
spective of  any  legal  relations.  They  differ  from  pre- 
sumptions of  law  in  this  essential  respect,  that  while  those 
are  reduced  to  fixed  rules,  and  constitute  a  branch  of  the 
particular  system  of  jurisprudence  to  which  they  belong, 
these  merely  natural  presumptions  are  derived  wholly 
and  directly  from  the  circumstances  of  the  particular  case, 
by  means  of  the  common  experience  of  mankind,  without 
the  aid  or  control  of  any  rules  of  law  whatever.  Such, 
for  example,  is  the  inference  of  guilt  drawn  from  the 
discovery  of  a  broken  knife  in  the  pocket  of  a  prisoner, 
the  other  part  of  the  blade  being  found  sticking  in  the 
window  of  a  house  which,  by  means  of  such  an  instru- 
ment, had  been  burglariously  entered.  These  presump- 
tions remain  the  same  in  their  nature  and  operation, 
under  whatever  code  the  legal  effect  or  quality  of  the 
facts,  when  found,  is  to  be  decided.  (76.,  p.  49.) 

It  is  a  presumption  of  law,  that  when  a  patent  has  been 
obtained,  and  the  specification  and  drawing  recorded  in 
the  Patent  Office,  every  man  who  subsequently  takes  out 
a  patent  for  a  similar  machine  has  a  knowledge  of  the 
preceding  patent.  As  in  chancery  it  is  a  maxim  that 
every  man  is  presumed  to  have  notice  of  any  fact  upon 
which  he  is  put  upon  inquiry  by  documents  within  his 
possession,  if  such  facts  could,  by  ordinary  diligence,  be 
discovered  upon  such  inquiry.  It  is  also  a  presumption 
of  fact  that  every  man,  having  within  his  power  the  ex- 
act means  of  information,  and  desirous  of  securing  to 
himself  the  benefit  of  a  patent,  will  ascertain,  for  his  own 


EVIDENCE.  509 

interest,  whether  any  one  on  the  public  records  has 
acquired  a  prior  right.  (Odiorne  v.  Winkley,  2  Gall.,  55.) 

All  persons  are  bound  to  take  knowledge  of  the  doings 
of  the  Patent  Office  in  relation  to  inventions.  (Marcy  v. 
Trotter,  MS.  Appeal  Cases,  D.  0.,  1860.) 

In  the  case  of  the  Philadelphia  and  Trenton  Railroad 
Company  v.  Stimson,  (14  Peters,  458,)  Mr.  Justice  Story 
said:  "It  is  a  presumption  of  law  that  all  public  officers 
perform  their  proper  official  duties  until  the  contrary  is 
proved.  And  where,  as  in  the  present  case,  an  act  is  to 
be  done,  or  patent  granted  upon  evidence  and  proofs  to 
be  laid  before  a  public  officer,  upon  which  he  is  to  decide, 
the  fact  that  he  has  done  the  act  or  granted  the  patent  is 
prima  facie  evidence  that  the  proofs  have  been  regularly 
made,  and  were  satisfactory.  "No  other  tribunal  is  at 
liberty  to  reexamine  or  controvert  the  sufficiency  of  such 
proofs,  if  laid  before  him,  when  the  law  has  made  such 
officer  the  proper  judge  of  their  sufficiency  and  compe- 
tency. It  is  not,  then,  necessary  for  the  patent  to  con- 
tain any  recitals  that  the  prerequisites  to  the  grant  of  it 
have  been  duly  complied  with,  for  the  law  makes  the 
presumption;  and  if,  indeed,  it  were  otherwise,  the  re- 
citals would  not  help  the  case,  without  the  auxiliary 
proof  that  these  prerequisites  had  been,  de  facto,  com- 
plied with.  This  has  been  the  uniform  construction,  as 
far  as  we  know,  in  all  our  courts  of  justice  upon  matters 
of  this  sort.  Patents  for  lands,  equally  with  patents  for 
inventions,  have  been  deemed  prima  facie  evidence  that 
they  were  regularly  granted,  whenever  they  have  been 
produced  under  the  great  seal  of  the  government,  with- 
out any  recitals  or  proofs  that  the  prerequisites  of  the 
acts  under  which  they  have  been  issued  have  been  duly 
43* 


510  PROCEDURE  IN  THE  PATENT  OFFICE. 

observed.  In  cases  of  patents,  the  courts  of  the  United 
States  have  gone  one  step  further,  and  as  the  patentee  is 
required  to  make  oath  that  he  is  the  true  inventor  before 
he  can  obtain  a  patent,  the  patent  has  been  deemed  prima 
facie  evidence  that  he  has  made  the  invention." 

It  is  a  presumption  of  law  that  the  patentee  is  the  first 
inventor  of  the  thing  patented  by  him,  and  the  burden 
of  proof  is  on  the  party  denying  it  to  disprove  the  fact. 
(Pitts  v.  Hall,  2  Blatchf.,  231,)  and  the  burden  of  proof 
that  a  combination  is  not  new  is  on  the  party  denying 
that  it  is  not  new.  (Hovey  v.  Henry,  3  West.  Law  Jour., 
154.) 

The  legal  presumption  is,  from  the  action  of  the  Patent 
Office,  that  a  reissued  patent  is  for  the  same  invention  as 
the  original  patent.  (Hussey  v.  McCormick,  1  Fish.,  509.) 
The  law  requiring  that  an  inventor  should  describe  his 
invention  with  accuracy  and  fullness,  and  it  being  the 
duty  of  the  Commissioner  of  Patents  to  see  that  this  is 
done,  the  presumption  is  that  the  patent  has  been  issued 
upon  sufficient  foundation.  (Judson  v.  Cope,  1  Fish.,  615.) 

A  reissued  patent  is  prima  facie  evidence  that  the 
original  patent  was  lawfully  surrendered  and  the  new 
one  was  lawfully  granted,  (Knight  v.  Baltimore  and  Ohio 
Railroad,  3  Fish.,  1 ;)  and,  unless  fraud  upon  the  Patent 
Office  is  proved,  (and  it  must  be  proved,  never  inferred,) 
it  is  prima  facie  evidence  that  there  has  been  no  abandon- 
ment of  the  invention  to  the  public;  and  the  burden  of 
proof  is  on  the  defendant  to  show  that  any  surrender  to 
the  public  has  taken  place.  (Hqffheim  v.  Brandt,  3  Fish., 
218.)  The  reissue  furnishes  prima  facie  evidence  that 
everything  necessary  to  justify  the  Commissioner  in 
granting  the  reissue  has  been  produced  before  the  grant 


EVIDENCE.  511 

was  made,  (ib. ;)  and,  as  the  law  now  stands,  the  decision 
of  the  Commissioner  is  final  and  conclusive  in  cases 
of  reissue,  unless  impeached  for  fraud  in  his  or  the  pat- 
entee's acts,  or  for  some  irregularity  on  the  face  of  the 
papers,  or  a  clear  repugnance  between  the  original  and 
reissued  patents.  (Slake  v.  Stafford,  3  Fish.,  294.) 

However,  it  is  in  accordance  with  the  late  decisions 
of  the  courts,  that  the  decision  of  the  Commissioner  is 
not  conclusive  upon  the  substantial  identity  of  the  inven- 
tion claimed  in  the  original."  (3  Fish.,  439;  vide  supra, 
p.  570.) 

The  patent  itself  is  prima  fade  evidence  that  it  was 
lawfully  issued,  and  that  the  party  who  claims  it  is  the 
original  inventor;  and,  if  it  be  assailed,  the  proof  must 
come  from  the  party  calling  the  validity  in  question, 
(Hoffheim  v.  Brandt,  3  Fish,  218,)  and  the  original  pre- 
sumptions of  novelty  and  utility  arising  from  the  grant 
of  a  patent  are  strengthened  by  the  extension.  ( Whitney 
v.  Mowry,  3  Fish.,  157.) 

It  is  a  presumption  of  law  that  what  the  patentee  does 
not  distinctly  assert  to  be  his  invention  was  known  be- 
fore. (Smith  v.  Higgins,  1  Fish.,  587.)  It  is  to  be  pre- 
sumed that  persons  obtaining  patents  have  acquainted 
themselves  with  the  state  of  the  art  in  which  they  are 
interested,  as  made  known  in  books  or  by  machines 
built  and  put  in  use,  and  evidence  is  not  admissible  to 
prove  the  contrary.  (Ib.} 

The  recital  in  a  reissue  of  a  prior  assignment,  and  the 
action  of  the  Commissioner  in  granting  the  patent,  make 
a  prima  fade  case  of  title.  (Middletown  Tool  Company  v. 
Jvdd,  3  Fish.,  141.) 

The  constructor  of  a  machine  is  presumed  to  be  the 


512  PROCEDURE  IN  THE  PATENT  OFFICE. 

inventor,  and  the  burden  of  proof  is  on  him  who  denies 
the  fact,  and  claims  to  be  the  inventor,  (Atkinson  v. 
Boardman,  MS.  Appeal  Cases,  D.  C.,  1847;)  but  the  claim 
of  a  draughtsman  to  an  invention  which  he  is  employed 
to  put  in  shape  is  to  be  viewed  with  suspicion,  (Doughty 
v.  Clark,  Commissioners'  Decisions,  1869,  p.  14,)  and  where 
an  invention  is  reduced  to  practice  by  an  operative  em- 
ployed to  labor  upon  it,  the  presumption  is  that  his 
employer  is  the  inventor ;  but,  on  the  other  hand,  he  is 
presumed  to  be  the  inventor  if  he  is  laboring  under  a 
general  employment.  (Foster  $  Townsend  v.  Fowle,  35.) 

A  patent  is  prima  facie  evidence  that  the  grant  of  right 
in  it  is  valid,  that  the  things  described  in  it  are  new  and 
useful,  that  they  required  invention,  and  that  they  were 
the  invention  of  the  patentee;  and  such  prima  facie  evi- 
dence must  have  full  effect,  unless  rebutted  by  sufficient 
countervailing  evidence,  (Potter  v.  Holland,!  Fish.,  327;) 
but  the  prima  facie  force  of  a  parent,  as  to  priority  of 
invention  on  the  part  of  the  patentee,  when  once  de- 
stroyed by  evidence  of  prior  invention  on  the  part  of 
another,  cannot  be  restored  by  the  patent  itself,  but  only 
by  specific  testimony  from  witnesses.  (Barstoiv  v.  Swan, 
MS.  Appeal  Cases,  1860.) 

Under  the  act  of  1790  a  patent  was  made  prima  facie  evi- 
dence. That  act  was  repealed  by  the  act  of  1793,  and  that 
provision  was  not  re-enacted  in  it;  hence  a  patent  was 
not  received  in  courts  of  justice  as  even  prima  facie  evi- 
dence that  the  invention  patented  was  new  or  useful;  but 
the  plaintiff  was  bound  to  prove  these  facts  to  make  out 
his  case.  But  the  act  of  1836  introduced  a  new  system, 
and  under  it — its  inquisition  and  examination — a  pat- 
ent is  received  as  prima  facie  evidence  of  the  truth  of 


EVIDENCE.  513 

the  facts  asserted  in  it.  (Corning  v.  Burden,  15  How., 
270.) 

344.  DECLARATION  AND  ACTS  OF  THE  PARTIES. — The 
declarations  of  a  party,  at  a  given  time,  that  he  had  in- 
vented a  machine  afterward  patented,  and  which  he  then 
described,  may  be  received  in  evidence;  but  they  are  not 
proof  that  he  was  the  inventor,  but  only  that  he  said  he 
was,  (Evans  v.  Hettick,  3  Wash.,  410;)  and  in  cases  of  inter- 
fering applications,  the  declaration  of  the  parties  them- 
selves in  their  own  favor,  in  the  absence  of  each  other, 
are  not  competent  evidence  for  any  purpose,  but  to  ascer- 
tain when  and  what  they  respectively  claimed  to  have 
invented.  (Atkinson  v.  Boardman,  MS.  Appeal  Cases,  D. 
C.,  1847.) 

In  the  case  of  the  Philadelphia  and  Trenton  Railroad 
Company  v.  Stimson,  (14  Pet.,  462,)  Mr.  Justice  Story,  in 
delivering  the  opinion  of  the  court,  said:  "The  objec- 
tion is,  that,  upon  general  principles,  the  declarations 
and  conversations  of  a  plaintiff  are  not  admissible  evi- 
dence in  favor  of  his  own  rights.  As  a  general  rule, 
this  is  undoubtedly  true.  It  is,  however,  but  a  general 
rule,  and  admits  and  requires  various  exceptions.  There 
are  many  cases  in  which  a  party  may  show  his  declara- 
tions conflict  with  acts  in  his  own  favor  as  a  part  of  the 
res  gestce.  There  are  other  cases  again  in  which  his 
material  declarations  have  been  admitted.  Thus,  for 
example,  in  the  case  of  an  action  for  an  assault  and  bat- 
tery and  wounding,  it  has  been  held,  that  the  declara- 
tions of  the  plaintiff  as  to  his  internal  pains,  aches,  in- 
juries, and  symptoms,  to  the  physician  called  to  pre- 
scribe for  him,  are  admissible  for  the  purpose  of  show- 
ing the  nature  and  extent  of  the  injuries  done  to  him. 


514  PROCEDURE  IN  THE  PATENT  OFFICE. 

(See  1  Phillips  on  Evidence,  c.  12,  §  1,  p.  200-202,  8th 
ed.,  1838.)  In  many  cases  of  inventions,  it  is  hardly 
possible  in  any  other  manner  to  ascertain  the  precise 
time  and  exact  origin  of  the  particular  invention.  The 
invention  itself  is  an  intellectual  process  or  operation ; 
and,  like  all  other  expressions  of  thought,  can  in  many 
cases  scarcely  be  known  except  by  speech.  The  inven- 
tion may  be  consummated  and  perfect,  and  may  be  sus- 
ceptible of  complete  description  in  words,  a  month  or 
even  a  year  before  it  can  be  embodied  in  any  visible 
form,  machine,  or  composition  of  matter.  It  might  take 
a  year  to  construct  a  steamboat,  after  the  inventor  had 
completely  mastered  all  the  details  of  his  invention,  and 
had  fully  explained  them  to  all  the  various  artisans 
whom  he  might  employ  to  construct  the  different  parts 
of  the  machinery.  And  yet  from  those  very  details  and 
explanations  another  ingenious  mechanic  might  be  able 
to  construct  the  whole  apparatus,  and  assume  to  himself 
the  priority  of  the  invention.  The  conversations  and 
declarations  of  a  patentee,  merely  affirming  that  at  some 
former  period  he  invented  that  particular  machine,  might 
well  be  objected  to.  But  his  conversations  and  declara- 
tions, stating  that  he  had  made  an  invention,  and  de- 
scribing its  details  and  explaining  its  operations,  are 
properly  to  be  deemed  an  assertion  of  his  right,  at  that 
time,  as  an  inventor,  to  the  extent  of  the  facts  and  de- 
tails which  he  then  makes  known,  although  not  of  their 
existence  at  an  antecedent  time.  In  short,  such  conver- 
sations and  declarations,  coupled  with  a  description  of 
the  nature  and  objects  of  the  invention,  are  to  be  deemed 
a  part  of  the  res  gestce,  and  legitimate  evidence  that  the 
invention  was  then  known  to  and  claimed  by  him,  and 


EVIDENCE.  515 

thus  its  origin  may  be  fixed  at  least  as  early  as  that 
period." 

Although  the  mere  declaration  of  an  inventor,  that  at 
a  certain  time  he  made  the  invention,  is  not  evidence. 
(Cochrane  v.  Waterman,  MS.  Appeal  Cases,  D.  C.,  1844.) 
Yet  the  declarations  of  a  party,  describing,  at  a  particu- 
lar time,  an  alleged  invention,  are  admissible  to  show 
what  he  knew  or  had  invented  at  the  time  such  declara- 
tions were  made,  provided  they  were  made  before  a  dis- 
pute or  contest  had  arisen.  (Yearsly  v.  Brookfield,  ib., 
1853.)  But  the  conversation  and  declaration  of  a  party 
as  to  an  invention  are  evidence  of  his  right  at  the  time 
only  to  the  extent  of  the  fact  and  details  which  he  then 
describes  and  makes  known.  (Garrett  v.  Davidson,  ib., 
1857.) 

The  correspondence  between  the  office  and  a  patentee 
is  evidence,  at  least  in  a  court  of  equity,  for  the  purpose 
of  showing  the  limitation  placed  by  the  paten  tee  upon  his 
claims.  (Pike  v.  Potter,  3  Fish.,  55.)  And  the  letters  of 
a  party  to  the  Commissioner  of  Patents,  applying  for  a 
patent  for  his  invention,  are  admissible  as  evidence  as  to 
the  fact  of  his  being  the  inventor.  (Pettibone  v.  Derringer, 
4  Wash.,  219.) 

Admissions  or  declarations  as  to  an  invention,  made  in 
a  way  of  compromise  and  without  the  admission  of  any 
particular  facts,  are  not  admissible  as  evidence;  but  if 
made  voluntarily,  without  any  pending  negotiation,  it 
would  seem  they  are  admissible.  (Gibbs  v.  Johnson,  MS. 
Appeal  Cases,  D.  C.,  1860.) 

The  fact  that  a  party  is  a  witness  to  the  application  of 
another  for  a  patent  for  a  particular  invention  does  not 
estop  such  party  from  afterwards  claiming  to  be  the  orig- 


516  PROCEDURE  IN  THE  PATENT  OFFICE. 

inal  inventor  of  such  invention,  and  lie  may  show  that 
he  was  deceived  as  to  the  character  of  the  invention  he 
was  witnessing.  (Herring  v.  Leffingwell,  ib.,  1861.) 

"Where  a  party  had  disclaimed  those  parts  of  his  inven- 
tion which  were  found  in  another  patent,  it  was  held  that 
this  was  an  admission  of  the  validity  of  such  patent. 
(Waterbury  Brass  Company  v.  New  York  and  Brooklyn 
Brass  Company,  3  Fish.,  43.) 

It  seems  that  evidence  as  to  the  declaration  of  an  in- 
ventor, which  referred  to  a  specimen  or  model  of  his  in- 
vention, cannot  be  received  without  the  production  of 
such  model  or  without  its  non-production  being  accounted 
for,  (Richardson  v.  Hicks,  MS.  Appeal  Cases,  D.  0.,  1854,) 
and  an  exhibit  cannot  be  introduced  in  evidence  for  the 
purpose  of  showing  that  it  is  like  the  original  model, 
unless  the  non-production  of  the  original  is  accounted 
for.  (76.) 

345.  DECLARATIONS  AND  ACTS  OF  THIRD  PARTIES. — 
Where  a  witness  was  asked  by  counsel  to  state  what 
third  parties  had  said  concerning  an  invention,  the  court 
decided  that  the  question  was  improper.  The  person 
from  whom  the  witness  received  the  information  on  the 
subject  ought  to  have  been  called  on  to  give  it  in  the 
usual  way,  and  that  the  question  was  an  attempt  to  intro- 
duce mere  hearsay  evidence  of  what  others  told  the  wit- 
ness. (Evans  v.  Hettick,  3  Wash.,  414.) 

The  declarations  of  a  person  as  an  agent,  in  relation  to 
the  business  intrusted  to  him,  and  made  at  the  time  so 
intrusted,  are  competent  concerning  it,  as  a  part  of  the 
resgestaz,  if  they  relate  to  the  act  clearly.  (Aiken  v.  Bemis, 
3  Wood.  $>  Minot,  350.) 

The  declarations  of  an  assignor  of  a  patent,  after  he  has 


EVIDENCE.  517 

parted  with  his  interest,  are  inadmissible,  either  to  show 
a  want  of  title  in  him  or  to  affect  the  quality  of  the  arti- 
cle, or  impair  the  rights  of  the  purchaser.  (Many  v. 
Jugger,  1  Blatchf.,  376.)  And  the  declarations  of  a  pat- 
entee who  had  parted  with  all  his  interest  is  only  hearsay 
evidence.  ( Wilson  v.  Simpson,  9  How.,  121,  122.) 

The  declarations  of  a  third  party  in  an  interference,  that 
he  was  a  part  inventor,  are  admissible  to  show  that 
neither  of  the  applicants  is  entitled  to  a  patent.  ( Yearsly 
v.  Brootyeld,  MS.  Appeal  Cases,  D.  0.,  1853.) 

346.  PAROL  AND  SECONDARY  EVIDENCE. — Primary  evi- 
dence is  that  kind  of  proof  which,  under  any  possible 
circumstances,  affords  the  greatest  certainty  of  the  fact 
in  question,  and  it  is  illustrated  by  the  case  of  a  written 
document ;  the  instrument  itself  being  always  regarded 
as  the  primary  or  best  possible  evidence  of  its  existence 
and  contents.  If  the  execution  of  an  instrument  is  to  be 
proved,  the  primary  evidence  is  the  testimony  of  the  sub- 
scribing witness,  if  there  be  one.  Until  it  is  shown  that 
the  production  of  the  primary  evidence  is  out  of  the 
party's  power,  no  other  proof  of  the  fact  is  in  general 
admitted.  All  evidence  falling  short  of  this  in  its  degree 
is  termed  secondary.  The  question  whether  evidence 
is  primary  or  secondary  has  reference  to  the  nature  of 
the  case  in  the  abstract,  and  not  to  the  peculiar  circum- 
stances under  which  the  party  in  the  particular  cause  on 
trial  may  be  placed.  It  is  a  distinction  of  law,  and  not 
of  fact;  referring  only  to  the  quality,  and  not  to  the 
strength  of  the  proof.  Evidence  which  carries  on  its  face 
no  indication  that  better  remains  behind  is  not  second- 
ary, but  primary.  And  though  all  information  must  be 
traced  to  its  source,  if  possible,  yet  if  there  are  several 
44 


518  PROCEDURE  IN  THE  PATENT  OFFICE. 

distinct  sources  of  information  of  the  same  fact,  it  is  not 
ordinarily  necessary  to  show  that  they  have  all  been  ex- 
hausted before  secondary  evidence  can  be  resorted  to. 
(Greenleaf  on  Evidence,  p.  99.) 

The  cases  which  most  frequently  call  for  the  applica- 
tion of  the  rule  now  under  consideration  are  those  which 
relate  to  the  substitution  of  oral  for  written  evidence, 
and  they  may  be  arranged  into  three  classes :  including 
in  the  first  class  those  instruments  which  the  law  requires 
should  be  in  writing;  in  the  second,  those  contracts  which 
the  parties  have  put  in  writing ;  and  in  the  third,  all  other 
writings  the  existence  of  which  is  disputed,  and  which 
are  material  to  the  issue.  (/&.,  p.  100.) 

By  written  evidence,  is  meant  not  eveiy  thing  which 
is  in  writing,  but  that  only  which  is  of  a  documentary 
and  more  solemn  nature,  containing  the  terms  of  a  con- 
tract between  the  parties,  and  designed  to  be  the  reposi- 
tory and  evidence  of  their  final  intentions.  "When  par- 
ties have  deliberately  put  their  engagements  into  writ- 
ing in  such  terms  as  import  a  legal  obligation,  without 
any  uncertainty  as  to  the  object  or  extent  of  such  en- 
gagement, it  is  conclusively  presumed  that  the  whole 
engagement  of  the  parties,  and  the  extent  and  manner 
of  their  undertaking,  was  reduced  to  writing;  and  all 
oral  testimony  of  a  previous  colloquium  between  the  par- 
ties, or  of  conversation  or  declarations  at  the  time  when 
it  was  completed,  or  afterwards,  as  it  would  tend  in 
many  instances  to  substitute  a  new  and  different  con- 
tract for  the  one  which  was  really  agreed  upon,  to  the 
prejudice,  possibly,  of  one  of  the  parties,  is  rejected.  In 
other  words,  as  the  rule  is  now  more  briefly  expressed, 
"parol  contemporaneous  evidence  is  inadmissible  to  con- 


EVIDENCE.  519 

tradict  or  vary  the  terms  of  a  valid  written  instrument." 
(76.,  p.  312.) 

Parol  evidence,  bearing  upon  written  contracts  or  pa- 
pers concerning  patent  interests,  ought  not  to  be  admitted 
without  the  production  of  such  contracts  or  papers,  to' 
enable  the  court  andi  jury  to  see  whether  the  admission 
of  parol  evidence  will  trench  upon  the  rule  that  parol 
evidence  is  not  admissible  to  vary  or  contradict  written 
contracts  or  papers.  (Philadelphia  and  Trenton  Railroad 
Company  v.  Stimson,  14  Pet.,  461.) 

Certificates  of  manufacturers  and  others  concerning  an 
invention  should  be  taken  under  oath,  in  order  to  be  re- 
ceived and  considered  upon  application  for  a  patent. 
(Jillson  v.  Winsor,  MS.  Appeal  Cases,  D.  O.,  1850.) 

Although  a  letter  from  a  third  party  is  sent  under 
cover  of  one  from  the  inventor  to  the  Commissioner 
of  Patents,  it  is  not  evidence  of  priority  of  invention. 
(Cochrane  v.  Waterman,  ib.,  1844.) 

Copies  of  original  memoranda  and  drawings  are  not 
admissible  to  confirm  the  testimony  of  the  party  who 
made  them,  but  the  originals  might  have  been  used  to 
refresh  the  memory  of  the  witness.  (Jones  v.  Wetherill, 
MS.  Appeal  Cases,D.C.,  1855.) 

Oral  evidence  of  the  meaning  of  parties  in  explana- 
tion of  a  written  instrument  respecting  a  patent  right  is 
inadmissible.  The  agreement,  being  in  writing,  must 
speak  for  itself.  (Troy  Iron  and  Nail  Factory  v.  Corning, 
1  Blatchf.,  472.) 

347.  PATENT  OFFICE  RECORDS,  (vide  supra,  pp.  309,  310.) 
"Written  or  printed  copies  of  any  records,  books,  papers, 
or  drawings  belonging  to  the  Patent  Office,  and  of  letters 
patent  under  the  signature  of  the  Commissioner  or  Act- 


520  PROCEDURE  IN  THE  PATENT  OFFICE. 

ing  Commissioner,  with  the  seal  of  the  office  affixed,  shall 
be  competent  evidence  in  all  cases  wherein  the  originals 
could  be  evidence;  and  any  person  making  application 
therefor,  and  paying  the  fee  required  by  law,  shall  have 
certified  copies  thereof.  And  copies  of  the  specifications 
and  drawings  of  foreign  letters  patent,  certified  in  like 
manner,  shall  be  prima  fade  evidence  of  the  fact  of  the 
granting  of -such  foreign  letters  patent,  and  of  the  date 
and  contents  thereof.  (Act  of  July  8, 1870,  §  57.) 

Papers  or  drawings  on  file. at  the  Patent  Office  are 
public  records,  and  certified  copies  of  them  must  be  re- 
ceived in  evidence  when  offered;  if  discordant,  one  may 
destroy  the  effect  of  the  other,  but  they  need  not  concur 
in  every  particular.  (Emerson  v.  Hogg,  2  Blatchf.,  12.) 
If  such  copies  are  erroneous,  the  Commissioner  of  Pat- 
ents has  the  power  and  ought  to  make  them  conform  to 
the  patent  itself  and  to  the  record,  ( Woodworth  v.  Hall,  1 
Wood.  $  Minot,  260;)  and  a  former  and  defective  cer- 
tified copy  of  a  patent  may  be  corrected  by  another 
certified  copy.  (Brooks  v.  Bicknell,  3  McLean,  434.)  Cer- 
tified copies  of  papers  in  the  Patent  Office  are  to  be  re- 
ceived as  prima  facie  evidence  of  the  genuineness  of  the 
originals  on  file  and  absolute  evidence  of  the  correctness 
of  the  copies  from  the  record.  (Parker  v.  Haworth,  4 
McLean,  371.)  A  certified  copy  of  an  assignment  of  a 
pa,tent  is  prima  facie  evidence  of  the  genuineness  of  the 
original,  (Lee  v.  Blandy,  2  Fish.,  89,)  and  the  production 
of  the  originals  cannot  be  compelled.  (Brooks  v.  Bick- 
nell,  3  McLean,  434.) 

348.  EVIDENCE  OF  ABANDONMENT,  (vide  supra,  pp.  264- 
267.) — Abandonment  is  in  the  nature  of  a  forfeiture  of 
right,  which  the  law  does  not  favor,  and  it  should  be  made 


EVIDENCE.  521 

out  beyond  all  reasonable  doubt,  (Pitts  v.  Hall,  2  Blatchf., 
238;)  and  the  law  throws  upon  a  party  who  seeks  to 
obtain  the  benefit  of  a  forfeiture  the  burden  of  proving 
it  beyond  all  reasonable  question.  (McCormick  v.  Sey- 
mour, 2  Blatchf.,  256.)  The  natural  presumption  is,  that 
a  person  who  has  invented  a  machine  would  not  give  it 
to  the  world,  and  there  must  be  evidence  of  a  distinct 
character  as  to  abandoment,  showing  such  intention. 
(Hovey  v.  Henry,  3  West.  Law  Jour.,  155.)  Where  ex- 
periments were  unsatisfactory,  and  the  inventor  threw 
aside  his  temporary  model,  and  wholly  neglected  for 
years  to  follow  up  his  experiments,  so  as  to  produce  a 
perfect  machine,  it  was  held,  that  such  acts  afforded 
strong  and  decisive  evidence  of  an  abandonment.  (Park- 
hurst  v.  Kinsman,  1  Blatchf.,  494.) 

In  the  case  of  Goodyear  $  Bacon  v.  Hills,  Mr.  Justice 
Cartter  says :  "  The  law-makers  have  admonished  invent- 
ors and  the  public  that  if,  before  an  application,  they  suffer 
more  than  two  years  to  elapse  in  the  use  of  the  invention, 
they  shall  absolutely  forfeit  all  right  and  title  thereto.  It 
is  true  that  the  legislative  admonition  relates  to  the  period 
preceding  the  application.  But  it  appears  to  me,  so  far 
as  the  court  can  be  guided  by  its  own  judgment,  that  the 
inventor  is  left  under  the  dominion  of  common-law  prin- 
ciples in  regard  to  any  laches  by  which  the  application 
may  be  followed.  Is  it  the  law,  that  because  an  inventor 
files  his  application,  which  is  refused  by  the  office,  he  may 
sleep  upon  his  rights  indefinitely,  and  that  at  any  period 
in  his  lifetime,  or  that  of  his  representatives,  the  appli- 
cation may  be  revived  as  against  the  public?  I  think 
not.  Prima  facie,  I  think  he  would  have  to  show  a  rea- 
son why  he  should  be  so  permitted.  The  judgment  of 

44* 


522  PROCEDURE  IN  THE  PATENT  OFFICE. 

condemnation  by  the  office  advertises  to  the  country,  at 
least,  that  he  stands  in  no  better  position  than  before  the 
application  was  made.  The  country  is  advised,  by  the  de- 
liberation of  the  only  tribunal  provided  bylaw  for  the  as- 
certainment at  that  stage  of  the  invention,  that  he  has  no 
rights.  More  especially  is  he  himself  advised  of  that  fact, 
for  he  is  a  party  to  the  proceeding,  and  more  immedi- 
ately damnified  by  the  rejection  of  the  application.  The 
rejection  would  at  least  be  regarded,  in  the  logic  of  equity, 
as  a  notice  to  him  to  proceed  with  diligence  to  traverse 
and  reverse  the  judgment  of  the  office."  (3  fish., 
139.) 

349.  EVIDENCE  OF  PRIORITY  OF  INVENTION. — When  a  man 
conceived  a  certain  machine,  no  one  knows  except  him- 
self; when  he  described  it,  no  one  knew  except  himself 
and  those  to  whom  he  described  it.  This  is,  from  the 
nature  of  the  case,  the  testimony  upon  which  reliance 
must  be  placed.  (Sayks  v.  Hapgood,  3  Fish.,  632.) 

Priority  of  application  for  a  patent  does  not  decide 
priority  of  invention,  (Perry  v.  Cornell,  MS.  Appeal  Cases, 
D.  C.,  1847;)  but  in  cases  of  interference,  the  party  who 
first  filed  so  much  of  his  application  for  a  patent  as  illus- 
trates his  invention  will  be  deemed  the  first  inventor,  in 
the  absence  of  proof  to  the  contrary.  (Patent  Office  Rules, 
July  1870,  vide  supra,  p.  451.)  He  is  entitled  to  be  placed 
in  the  condition  of  the  defendant.  His  oath,  being  first 
made,  gives  him  the  benefit  of  the  maxim,  "Potior  est 
conditeo  defendentis."  ( Waters  v.  Taylor,  MS.  Appeal  Oases, 
1869.) 

A  patent  is  prima  facie  evidence  that  the  patentee  was 
the  first  and  original  inventor,  ( Wmans  v.  New  York 
and  Harlem  Railroad,&\  Jour.  Frank.  Inst.,  3d  series,  320; 


EVIDENCE.  523 

Ransom  v.  Mayor,  £c.,  of  New  York,  1  Fish.,  252;  Ca- 
hoonv.  Ring,  1  Fish.,  397,)  and  must  prevail,  unless  there 
is  other  evidence  to  overcome  such  prima  facie  presump- 
tion. (Ransom  v.  Mayor,  $c.,  of  New  York,  1  Fish.,  252.) 
The  patentee  has  a  right  to  rest  upon  his  patent  for  his 
invention  until  its  validity  is  overthrown,  and  if  there  is  a 
reasonable  doubt  as  to  the  priority  of  invention,  the  pat- 
entee is  entitled  to  the  benefit  of  it,  ( Washburn  v.  Gould, 
3  -Story,  142;)  and  where  one  party  has  a  patent,  the  proof 
of  want  of  originality  must  be  specific  and  decisive  in 
order  to  overthrow  such  patent.  ( Troy  Iron  and  Nail 
Factory^  v.  Corning,  1  Blatchf.,  472.)  Upon  interference 
with  a  patentee,  not  only  is  the  burden  of  proof  upon  the 
applicant  to  establish  priority  of  invention,  but  he  must 
also  explain  why  he  was  not  as  diligent  as  the  patentee 
in  making  his  application.  (Hunt  v.  Wood,  Commission- 
ers' Decisions,  1869,  p.  34.) 

Priority  of  knowledge  and  use  of  an  invention  is  a 
question  of  fact,  which  may  be  decided  from  one  witness; 
the  question  is  on  the  credibility  and  not  the  number  of 
witnesses.  ( Whitney  v.  Emmett,  Bald.,  310.) 

Proof  that  a  party  had  made  a  thing  at  a  certain  time 
is  prima  facie  evidence  that  it  had  been  invented  by  the 
patentee,  until  other  evidence  is  given  to  show  that  it  had 
been  previously  known.  (Pennock  v.  Dialogue,  4  Wash., 
451.)  But  the  silence  of  such  party  as  to  his  claim  of 
original  invention  at  such  time  may  be  opposed  to  such 
evidence.  (lb.,  542) 

In  considering  the  question  of  originality,  the  oath 
of  the  inventor,  made  prior  to  the  issue  of  letters  pat- 
ent, that  he  was  the  first  inventor  of  the  thing  patented, 
may  be  opposed  to  the  oath  of  a  witness,  ofiered  to  show 


524  PROCEDURE  IN  THE  PATENT  OFFICE. 

that  the  invention  was  not  original.  (Alden  v.  Dewey,  1 
Story,  339.) 

Where  a  dispute  arises  as  to  the  priority  of  invention, 
a  patentee  is  allowed  to  show  the  real  date  of  it,  and  to 
have  his  rights  as  fully  secured  as  if  he  had  taken  out 
his  patent  at  that  time.  (Parker  v.  Hulme,  1  Fish.,  44.) 

The  measure  of  proof  requisite  to  show  the  date  of  an 
invention  depends  upon  the  nature  of  the  invention, 
whether  complicated  or  not,  the  distance  of  time  when 
the  facts  occurred,  and  the  capacity  of  witnesses.  (Ste- 
phens v.  Salisbury,  MS.  Appeal  Cases,  D.  C.,  1855.) 

The  time  of  the  invention  of  an  improvement  must 
necessarily  precede  the  time  when  the  improvement  is 
applied  to  a  machine  in  operation.  (Cundell  v.  Park- 
hurst,  ib.,  1847.) 

Dates  in  an  account  book,  in  which  was  made  a  draw- 
ing of  an  invention,  are  not  conclusive  evidence  that  the 
invention  was  made  at  the  time  of  such  dates.  (Jittson  v. 
TF^or,^6.,1850.)  And  sketches  in  a  diary  deserve  little 
consideration  when  there  are  indications  that  they  have 
been  interpolated.  (Purdy  v.  White,  Commissioners'  Decis- 
ions, 1869,  p.  22.)  Proof  that  a  drawing  was  shown  by  A 
at  a  certain  time,  before  the  well-established  invention  of 
the  same  thing  by  B,  but  without  any  model,  and  with- 
out proof  that  the  articles  were  manufactured  until  long 
after  the  invention  of  B,  is  not  sufficient  to  establish  pri- 
ority of  invention  in  A.  (Jillson  v.  Winsor,  MS.  Appeal 
Cases,  D.  C.,  1850.)  Drawings  prepared  for  the  hearing 
of  the  interference  are  of  but  little  weight,  although  ac- 
companied with  proof  that  they  represent  such  as  existed 
before.  (Purdy  v.  White,  Commissioners'  Decisions,  1869, 
p.  22.) 


EVIDENCE.  525 

But  when  original  drawings  were  made  of  an  inven- 
tion, they  are  the  best  evidence  of  such  invention,  and 
on  the  non-production  of  them,  unless  legally  accounted 
for  as  being  lost,  the  legal  presumption  is  that,  if  pro- 
duced, they  would  show  the  facts  to  be  unfavorable. 
Beech  v.  Tucker,  MS.  Appeal  Cases,  D.  C.,  1860.)  Verbal 
description  may,  however,  be  sufficient,  without  models 
or  drawings,  to  show  the  date  of  an  invention,  (Stepfiens 
v.  Salisbury,  ib.,  1855;)  but,  to  establish  the  date  of  an 
invention,  it  is  not  sufficient  to  show  that  the  applicant 
was  engaged  upon  one  of  the  same  character,  without 
proof  of  its  identity.  (Black  v.  Locke,  Commissioners'  De- 
cisions, 1869,  p.  13.) 

He  is  the  real  inventor,  and  is  entitled  to  a  patent,  who 
first  makes  a  machine  capable  of  useful  operation,  though 
others  may  have  previously  conceived  the  idea  and  made 
experiments  toward  putting  it  in  practice,  (vide  supra, pp. 
247,  248,  249,  250,  251 ;)  and  where  preliminary  experi- 
ments have  proved  unsatisfactory  to  both  parties,  reliance 
should  be  placed  on  the  first  reduction  to  successful  prac- 
tice. (Jennings  v.  Winter  $•  Harris,  Commissioners'  Decis- 
ions, 1869,  p.  38.) 

In  the  matter  of  interference  between  the  applications 
of  John  C.  Duckworth,  George  Crompton,  and  Horace 
Wyman,  for  letters  patent  for  improvement  in  looms,  the 
Commissioner  says:  "In  a  conversation  between  Cromp- 
ton and  Wyman,  in  1861,  the  latter  made  some  rough 
sketches,  which  he  explained  verbally  to  the  former,  of  a 
plan  which,  as  described,  embodied  in  a  rude  form  the 
invention  in  controversy.  Crompton  had  a  plan  of  his 
own,  however,  and,  after  discussion,  concluded  to  adopt 
it  in  preference  to  Wyman's.  Wyman's  sketches  were 


526  PROCEDURE  IN  THE  PATENT  OFFICE. 

not  preserved,  and  nothing  came  of  his  description  until 
September,  1866,  when  Crompton  recurred  to  the  idea, 
and,  as  Wyrnau  testifies, having  made  'modifications  and 
improvements '  upon  it,  built  an  experimental  loom, 
which  was  tried  for  a  few  days  during  that  month  in 
Hamilton's  tape  works  in  Worcester. 

"No  sketches,  models,  or  written  description  of  what 
was  alleged  to  have  been  invented  by  Wyman  in  1861 
having  been  preserved,  we  are  left  entirely  to  the  recol- 
lections of  Cromptou  and  Wyman,  both  to  some  extent 
interested  witnesses.  Proof  of  invention  consisting  wholly 
of  the  memory  of  conversations  occurring  or  of  sketches 
made  eight  years  before  is  of  the  most  unreliable  kind. 
(Foster  v.  Hamilton,  Commissioners'  Decisions,  1869,  p.  80 ; 
Townsend  $  Foster  v.  Fowle,  ib.,  p.  35;  White  v.  Allen,  2 
Fish.,  p.  445;  Winans  v.  New  York  and  Harlem  Railroad 
Company,  Frank.  Inst.  Jour.,  3d  series,  vol.  61,  p.  322.)  I 
should  hesitate  to  accept  such  evidence  as  against  a  sub- 
sequent invention  actually  reduced  to  practice. 

"But  if  Wyman  invented  anything  in  1861, he  did 
nothing  with  it  for  seven  years.  This,  if  the  invention 
or  application  of  others  intervened,  is  fatal  to  his  case. 
(See  Rowley  v.  Mason,  supra,  p.  483,  as  well  as  a  long  list  of 
cases  since  decided,  in  which  the  doctrine  of  that  case 
has  been  followed  and  applied.) 

"It  is  said  that  the  war  intervened;  but  the  parties  ex- 
pressly testify  that  the  manufacture  of  looms  from  that 
cause  was  interrupted  but  for  a  single  year,  and  the  war 
ceased  in  1865.  It  is  said  that  there  was  a  verbal  agree- 
ment between  Crompton  and  Wyman,  by  virtue  of  which 
all  inventions  patented  by  the  latter  were  to  belong  to 
the  works;  but  as  this  agreement  still  exists,  and  the  ap- 


EVIDENCE.  527 

plication  of  Wyman  is  being  pressed  confessedly  for  the 
benefit  of  Crompton,  who  is  the  real  party  in  interest, 
Wyman  is  to  be  charged  with  Crompton's  laches  as  well 
as  his  own.  The  interest  of  Wyman  in  the  invention  has 
always  been  the  same  as  now.  Crompton,  who  is  to  own 
the  patent,  cannot  be  allowed  to  say  that  Wyman  was 
prevented  by  him  from  obtaining  a  patent.  Nor  can 
Wyman,  who  has  no  pecuniary  interest  in  it,  be  allowed 
to  play  the  part  of  an  inventor  under  duress.  This  is 
not  the  case  of  White  v.  Allen,  (2  Fish.,  445,)  nor  anything 
like  it.  This  is  Wyman's  application  only  in  name.  It 
is  really  made  by  Crompton  for  his  own  interest,  and  a 
fortiori  he  must  be  charged  with  his  own  laches. 

"All  that  was  done  by  Wyman,  then,  was  to  make  a 
suggestion,  subsequently  abandoned.  It  was  competent 
for  any  one  to  take  up  that  suggestion,  to  modify,  improve 
upon,  or  perfect  it,  and  then  to  use  or  patent  it."  ( Whitely 
v.Swayne,  7  Wall.,  685;  Duckworth  v.  Crompton,  Commis- 
sioners' Decisions,  May  16,  1870.) 

350.  EVIDENCE  OF  PRIOR  KNOWLEDGE  OR  USE  IN  A  FOR- 
EIGN COUNTRY. — No  person  shall  be  debarred  from  receiv- 
ing a  patent  for  his  invention  or  discovery,  nor  shall  any 
patent  be  declared  invalid,  by  reason  of  its  having  been 
first  patented  or  caused  to  be  patented  in  a  foreign  coun- 
try, provided  the  same  shall  not  have  been  introduced 
into  public  use  in  the  United  States  for  more  than  two 
years  prior  to  the  application,  and  that  the  patent  shall 
expire  at  the  same  time  with  the  foreign  patent,  or,  if 
there  be  more  than  one,  at  the  same  time  with  the  one 
having  the  shortest  term;  but  in  no  case  shall  it  be  in 
force  more  than  seventeen  years.  (Act  of  July  8,  1870, 
§25.) 


528  PROCEDURE  IN  THE  PATENT  OFFICE. 

Whenever  it  sball  appear  that  the  patentee,  at  the  time 
of  making  his  application  for  the  patent,  believed  himself 
to  be  the  original  and  first  inventor  or  discoverer  of  the 
thing  patented,  the  same  shall  not  be  held  to  be  void  on 
account  of  the  invention  or  discovery,  or  any  part  thereof, 
having  been  known  or  used  in  a  foreign  country  before 
his  invention  or  discovery  thereof,  if  it  had  not  been 
patented  or  described  in  a  printed  publication.  (/&., 
§  62.) 

Evidence  cannot  be  received  of  actual  use  and  knowl- 
edge of  an  invention  in  a  foreign  country  prior  to  the 
time  of  the  invention  here,  unless  it  appears  that  the  in- 
vention or  improvement  was  patented  in  such  foreign 
country  or  described  in  some  public  work,  (Judson  v. 
Cope,  \Fish.,  615;)  and  it  must  appear  that  the  improve- 
ment has  been  so  clearly  and  intelligibly  described  that 
the  invention  could  be  made  or  constructed  by  a  compe- 
tent mechanic.  (Ib.} 

The  language  of  the  act  (§  6,  act  of  1839)  under  which 
this  limitation  was  made  is  as  follows :  "That  no  person 
shall  be  debarred  from  receiving  a  patent  for  any  inven- 
tion or  discovery,  &c.,  by  reason  of  the  same  having  been 
patented  in  a  foreign  country  more  than  six  months  prior 
to  his  application:  Provided,  $c.,  and  provided,  also,  That 
in  all  cases  every  such  patent  shall  be  limited  to  the  term 
of  fourteen  years  from  the  da,te  or  publication  of  such 
foreign  letters  patent." 

It  will  be  seen  that  the  language  is  "  date  or  publica- 
tion" of  the  foreign  letters  patent.  As  the  patent  can- 
not have  a  varying  term,  the  "  or"  is  to  be  read  conjunc- 
tively, and  the  phrase  is  in  effect  "  date  and  publication;" 
so  that,  if  there  be  a  difference  between  the  day  of  date 


EVIDENCE.  529 

and  the  day  of  publication,  the  limit  should  run  from  the 
latest  day. 

Under  the  English  law,  letters  patent  are  dated  when  the 
provisional  specification  is  filed.  The  applicant  is  allowed 
six  months  within  which  to  complete  his  invention  and 
to  file  a  complete  and  extended  specification.  If  he  does 
this,  the  patent  is  formally  issued  to  him ;  if  not,  he  has 
"provisional  protection "  for  six  months,  when  all  pro- 
tection ceases.  During  the  six  months  he  may  amend, 
alter,  or  improve  upon  his  invention,  and  if  his  completed 
specification  does  not  describe  an  invention  inconsistent 
with  his  title  and  provisional  specification,  he  may  include 
his  alterations,  amendments,  and  improvements  in  his 
final  paper.  His  provisional  specification  is  in  effect  a 
caveat.  It  may  not  be  followed  up  by  a  perfect  invention ; 
when,  after  six  months,  all  protection  ceases. 

As  the  invention  in  its  perfected,  completed  form  is 
not  "published"  until  the  enrollment  of  the  final  speci- 
fication; as,  in  fact,  much  of  the  invention  may  be  made 
between  the  time  of  the  filing  of  the  provisional  and  com- 
pleted descriptions,  it  would  seem  that  the  "  date  and 
publication"  which  are  to  determine  the  limit  of  a  patent 
in  this  country  should  be  the  date  of  the  filing  of  the 
complete  specification. 

This  was  the  view  of  the  law  entertained  by  Commis- 
sioner Ewbank,  when  referring  to  this  subject  in  the 
Rules  of  the  Patent  Office  published  in  1851.  (Patent 
Office  Reports,  1851,  p.  509.)  He  says :  "Xo  invention  will 
be  considered  as  patented  in  a  foreign  country  unless 
the  specification  has  been  enrolled  and  the  patent  in  all 
respects  complete." 

There  are  but  two  reported  cases  bearing  upon  this 
45 


530  PROCEDURE  IN  THE  PATENT  OFFICE. 

subject.  The  first  is  that  of  Brooks  v.  Norcross  (2  Fish., 
661,)  decided  in  1851  by  Mr.  Justice  Woodbury.  Cer- 
tain French  machines  were  offered  in  evidence  to  defeat 
the  Woodworth  patent,  which  machines,  it  was  insist- 
ed, had  been  patented  in  France.  The  language  of  the 
court  is  as  follows:  "But  were  these  two  French  inven- 
tions ever  'patented/  within  the  meaning  of  that  word 
in  the  act  of  Congress,  (July  4,  1836  ?)  The  word  there 
is  first  applied  in  connection  with  the  original  issue  of  a 
patent,  prohibiting  it  to  be  done  by  the  Commissioner, 
if  it  had  been  'patented'  abroad.  (§  7.)  It  is  next  used  in 
connection  with  the  defense  to  a  patent,  declaring  the 
defense  good  if  the  invention  has  before  been  '  patented' 
abroad.  (§  15.) 

"  The  word  '  patented,'  as  here  used,  must  of  course 
mean  covered  and  made  known  to  the  world  by  a  public 
patent,  so  as  to  bring  home  to  the  public  generally,  and 
probably,  a  knowledge  of  its  existence,  and  deprive  any 
one  of  the  credit  and  protection  of  being  original,  if  he 
afterward  construct  a  like  machine. 

"  But  in  the  French  system  of  patents  at  that  time  there 
existed  private  as  well  as  public  patents,  and,  for  aught 
which  appears,  there  may  have  been,  till  after  1828,  pat- 
ents of  the  former  character,  and  consequently  not  com- 
ing within  the  npirit  or  ordinary  meaning  of  the  word 
patented,  as  used  here  in  the  act  of  1836  to  describe  what 
is  open  and  should  be  known  to  the  community. 

"  This  vital  fact,  whether  private  or  public,  ought  to 
be  made  to  appear  by  the  defendant,  as  he  sets  up  the 
patent  as  if  coming  within  the  word  'patented'  as  used 
in  our  own  law,  when  nothing  can  be  within  the  spirit 
of  that  law  except  what  is  public  and  thus  known,  open 


EVIDENCE.  531 

and  hence  inimitable,  and  no  other  being  in  use  here ; 
such  being  the  design  and  principle  in  all  objections  of 
this  class  and  the  analogous  classes,  the  patents  must 
have  been  used  publicly,  if  used  before ;  a  description  of 
them  printed  publicly,  if  printed  before ;  an  invention  of 
them  been  made  public,  if  made  before;  and  'patented' 
of  course  publicly,  if  any  way,  before." 

The  second  case  is  that  of  Howe  v.  Morton,  (1  Fish.,  586,) 
decided  by  Judge  Sprague  in  1860.  In  this  case  the 
learned  judge  says:  "But  it  is  contended  that  this  ma- 
chine was  patented  abroad  prior  to  the  invention  here, 
although  the  specification  of  Fisher  &  Gibbons  was  not 
enrolled  until  after  the  invention  of  Howe  here.  This 
raises  another,  and,  so  far  as  I  am  aware,  a  new  question 
upon  the  construction  of  our  own  statute.  The  language 
of  the  statute  is  (§  7,  act  of  1836)  that  it  had  before  been 
'  patented  or  described  in  any  printed  publication. ' — '  pat- 
ented in  any  foreign  country.'  Was  this  invention  of 
Fisher  &  (ribbons  patented  in  England  before  the  middle 
of  May,  1845  ?  That  depends  upon  what  is  to  be  deemed 
patenting.  What  was  the  patent  taken  out  in  Decem- 
ber? -It  was  as  follows:  'Invention  of  certain  improve- 
ments in  the  manufacture  of  figured  or  ornamental  lace 
or  net,  or  other  fabrics.'  That  was  the  patent  and  whole 
description;  and  there  is  no  pretense  that  it  even  indi- 
cates any  invention  of  a  sewing  machine. 

"  It  is  only  by  virtue  of  the  specification  enrolled  in 
June,  1845,  that  we  discover  anything  as  to  the  stitching 
mechanism  in  the  machine. 

"  But  it  is  said  that  when  the  specification  was  enrolled  it 
took  effect  from  the  date  of  the  letters  patent,  and,  there- 
fore, what  was  specified  and  enrolled  in  June  afterward 


532  PROCEDURE  IN  THE  PATENT  OFFICE. 

was  in  fact  patented  in  December,  1844.  That  is  the 
argument.  What  is  the  meaning  of  the  word  'patented' 
in  our  statute  ?  The  English  government  may  give  such 
effect  to  certain  acts  of  their  own  as  they  see  fit;  they 
may  say  letters  patent  may  be  granted  in  general  terms, 
and  that  the  fourteen  years  they  grant  may  begin  at  the 
date  of  the  letters  patent,  though  no  specification  be  en- 
rolled till  six  months  after.  That  is  the  law  of  England; 
but  the  question  is,  what  did  the  Congress  of  the  United 
States  intend  when  they  used  the  words  'patented  in  any 
foreign  country?'  Did  they  mean  that  the  invention 
might  be  patented  before  it  was  made  ?  Because,  under 
the  English  law,  the  letters  patent  might  be  granted  be- 
fore the  specification  was  made,  and  the  specification 
might  contain  inventions  made  after  the  letters  patent 
were  granted.  There  would  be  some  force  in  the  argu- 
ment if  by  the  English  law  nothing  could  be  put  into 
the  specification  but  what  was  invented  or  known  before 
the  letters  patent  were  granted;  but  that  was  not  so.  The 
truth  is,  that  the  patentees  had  these  six  months  by  the 
terms  of  the  letters  patent  to  enroll  their  specification, 
and  during  all  that  time  they  may  have  made  inventions 
and  improvements;  and  the  very  thing  that  is  relied  upon 
here,  as  anticipating  Howe,  for  all  that  we  know,  may 
have  been  invented  after  the  middle  of  May,  1845,  and 
put  into  the  specification  in  June  following. 

"  What  is  meant  by  Congress  undoubtedly  is,  in  the  first 
place,  that  there  shall  have  been  an  invention ;  and,  in 
the  second  place,  that  it  shall  have  been  made  patent  to 
the  world,  patented.  Now,  we  have  no  satisfactory  evi- 
dence that  the  invention  was  made,  and  we  have  positive 
evidence  that  it  was  not  made  known  to  the  world  by 


EVIDENCE.  533 

being  patented  until  June,  1845;  it  was  not  made  patent 
until  after  the  invention  by  Howe.  I  am,  therefore,  of 
the  opinion  that  Fisher  &  Gibbons'  invention,  whatever 
it  may  have  been,  was  not  patented  until  after  Howe's 
invention,  and  can  have  no  effect  whatever." 

It  will  be  observed  that  these  decisions  refer  to  the 
date  of  the  foreign  patent  when  offered  as  a  defense  upon 
an  action  brought  for  the  infringement  of  an  American 
patent,  and  they  refer  to  patents  not  granted  to  the  Ameri- 
can patentee.  But  Mr.  Justice  "Woodbury  says,  in  Brooks 
v.  Norcross :  "But  'patented  abroad'  means  the  same 
thing  in  the  defense  as  in  the  issue  of  letters;"  and  it  is 
difficult  to  see  why  any  portion  of  the  life  of  the  Ameri- 
can patent  should  be  abridged  by  the  filing  abroad  of  an 
incomplete  and  unpublished  specification.  English  let- 
ters patent,  therefore,  in  so  far  as  they  affect  the  term 
of  those  granted  in  this  country,  are  to  be  held  to  be 
"dated  or  published"  at  the  time  of  the  enrolling  of 
the  final  specification.  (Commissioners'  Decisions,  1869, 
p.  60.) 

In  the  case  of  Maynard  ex  parte,  the  Commissioner 
says:  "Applicant  presents  a  proper  case  for  an  exten- 
sion, unless  his  invention  is  anticipated  by  the  reference 
given  by  the  examiner  to  the  provisional  specification  of 
John  Harcourt  Brown,  said  to  have  been  filed  in  England 
in  August,  1855. 

"I  have  already  had  occasion  (James  Cochrane  ex  parte, 
Commissioners'  Decisions,  1869,  p.  60)  to  consider  the  mean- 
ing of  the  word  '  patented,'  as  used  in  our  law  with  refer- 
ence to  inventions  patented  in  foreign  countries.  In  that 
case  it  was  said:  'English  letters  patent,  in  so  far  as  they 
affect  the  term  of  those  granted  in  this  country,  are  to 

45* 


534  PROCEDURE  IN  THE  PATENT  OFFICE. 

be  held  to  be  '  dated  or  published'  at  the  time  of  the  en- 
rolling of  the  final  specification.' 

"A  provisional  specification  is  analogous  to  our  caveat, 
and  is  filed  for  the  purpose  of  permitting  the  inventor  to 
complete  or  perfect  his  invention.  Sometimes  it  can- 
tains  no  more  than  the  title,  and  sometimes,  as  in  the 
case  of  the  present  reference,  is  unaccompanied  with 
drawings.  Such  a  grant  cannot  be  called  a  patent,  nor 
can  an  invention  described  in  it  be  said  to  have  been 
'patented'  abroad. 

"But  the  provisional  specification  is  found  in  aprinted 
publication,  which  bears  date  in  1856.  This  date  must 
be  construed  most  strongly  in  favor  of  the  applicant.  He 
has  made  oath  that  he  is  the  original  and  first  inventor. 
That  oath  can  only  be  overcome  by  proof  that  the  in- 
vention was  made  in  this  country,  or  patented  or  pub- 
lished abroad  before  the  date  of  his  invention.  Proof 
that  an  invention  was  published  in  1856  will  not  suffice. 
"We  cannot  assume  it  to  have  been  published  before  April 
18,  1856,  the  date  of  his  application;  indeed,  it  must  be 
assumed,  in  the  absence  of  proof,  to  have  been  published 
at  a  later  period. 

"Nor  is  the  recital  in  the  publication,  that  the  provis- 
ional specification  bore  date  in  1855,  of  the  slightest  con- 
sequence. The  printed  publication  can  be  evidence  only 
to  show  that  at  the  date  of  publication  the  thing  described 
had  an  existence,  and  no  recitals  of  former  dates  can  be 
received  as  testimony.  The  contents  of  the  book  may  be 
received  as  a  description,  but  not  as  a  history  of  the  in- 
vention. This  has  been  expressly  held  by  the  Supreme 
Court  of  the  United  States  in  Seymour  v.McCormick,  (19 
How.,  107.")  In  that  case  the  book  offered  in  evidence 


EVIDENCE.  535 

recited  that  the  machine  in  question  had  worked  success- 
fully, but  the  court  held  that  the  publication  could  not 
be  received  as  proof  of  any  other  fact,  except  that  of  the 
description  of  the  improvement. 

"It  follows  that  the  improvement  patented  to  Maynard 
has  not  been  patented  abroad,  nor  has  it  been  described 
in  a  printed  publication  of  earlier  date  than  his  patent." 
(Commissioners'  Decisions,  June  4,  1870.) 

As  to  the  English  laws  and  practice,  vide  supra,  p.  85, 
et  seq. 

351.  EVIDENCE  OF  NOVELTY  AND  UTILITY,  (vide  supra,  p.  .) 
Under  the  act  of  1793  a  patent  was  not  even  prima  facie 
evidence  that  the  invention  patented  was  new  or  useful; 
but  under  the  act  of  1836  a  patent  issued  after  tho  ex- 
amination required  is  received  as  prima  facie  evidence  of 
the  facts  asserted  in  it.  (Corning  v.  Burden,  15  How., 
270,  271.) 

Whether  there  is  novelty  in  an  invention  is  a  question 
to  be  determined  upon  a  view  of  all  the  evidence  in  the 
case.  (Sickles  v.  Borden,  3  Blatchf.,  540;  Batten  v.  Taggart, 
17  How.,  85  f  Park  v.  Little,  3  Wash.,  107.) 

A  combination  of  old  parts  to  produce  a  new  and  use- 
ful result  is  an  invention  for  which  a  patent  may  be 
granted.  (Evans  v.  Eaton,  Pet.  C.  C.,  322 ;  Barret  v.  Hall, 
IMason^  447;  Pennock  v.  Dialogue,  4  Wash.  C.  C.,  538; 
Earle  v.  Sawyer,  4  Mason,  1;  Le  Roy  v.  Tatham,  22  How., 
132.) 

It  is  no  objection  to  a  patent  for  a  combination  that 
some  or  even  all  the  parts  have  been  known  before.  If 
the  combination  of  them  is  new,  and  produces  what  is 
substantially  a  new  and  useful  result,  the  combination  is 
patentable.  (Pitts  v.  Whitman,  2  Story ^C.  C.,  609;  Hovey 


536  PROCEDURE  IN  THE  PATENT  OFFICE. 

v.  Henry,  3  West.  Law  Jour.,  153;  Homy  v.  Stevens,]. 
Wood,  and  Minot,  290;  Blake  v.  Sperry,  2  N.  Y.  Leg.  Obs., 
251;  Back  v.  Hermance,  1  Blatchf.,  398;  Hall  v.  Wi'Zes,  2 
{6.,  194.) 

A  patent  for  a  combination  of  three  distinct  things  is 
not  infringed  by  combining  two  of  them  with  a  third, 
which  is  substantially  different  from  the  third  element 
described  in  the  specification,  (Prouty  v.  Ruggles,  16  Pet., 
336;  Silsby  v.  Foote,  14  How.,  219;  McCormick  v.  Talcott, 
20  How.,  402;  Vance  v.  Campbell,  1  Black.,  427;  Earns  v. 
Godfrey,  I  Wall.,  78;  Brooks  v.  Jenkins,  3  McLean,  432; 
Brooks  v.  Biekndl,  4  McLean,  30 ;  Parker  v.  Hayworih,  4 
McLean,  370;  .LaJ'fo  v.  Shank,  1  .Fi'sA.,  465;  iee  v.  .5&m- 
<&/,  2  Fish.,  89;)  and  a  patent  for  a  combination  of  two 
things  is  not  a  patent  for  a  combination  of  one  of  the 
two  things  with  a  third  and  different  thing.  (Nicolson 
Pavement  Company  v.  Hatch,  3  Fish.,  432.) 

A  patentee  who  is  not  the  inventor  of  a  peculiar  ele- 
ment of  a  combination  cannot  claim  that  element  in 
combination  with  every  form  of  another  element  with 
which  he  unites  it,  but  may  claim  it  when  constructed 
and  combined  as  described  in  his  specification.  (Lara- 
bee  v.  Cortlan,  3  Fish.,  5.) 

A  combination  in  mechanism  must  consist  of  distinct 
mechanical  parts,  having  some  relation  to  each  other, 
and  each  having  some  function  in  the  organism,  ( Yale 
and  Greenleaf  Manufacturing  Company  v.  North,  3  Fish., 
279;)  and  in  considering  whether  one  element  of  a  com- 
bination is  substantially  the  same  as  an  element  of  another 
combination,  the  fact  that  one  works  better  than  the  other, 
coupled  with  the  fact  that  the  change  is  not  within  the 
ordinary  knowledge  and  skill  of  all  mechanics,  is  highly 


EVIDENCE.  537 

important,  and  often  decisive.  ( Woodman  v.  Stimson,  3 
Fish.,  98.)  Though  the  separate  parts  are  all  as  old  as 
the  mechanic  arts,  if  they  are  organized  into  a  new  ma- 
chine, having  a  new  mechanical  operation,  and  the  organ- 
ization of  this  new  machine  involved  the  exercise  of 
original  thought,  and  is  productive  of  useful  results, 
then  it  is  patentable,  (Blake  v.  Stafford,  3  Fish.,  294;)  and 
a  modification  of  the  parts  of  a  combination,  by  which 
a  new  result  is  obtained,  may  be  the  subject  of  letters 
patent,  ( Turrill  v.  Illinois  Central  Railroad  Company,  3 
Fish.,  330;)  but  all  the  parts  must  coact  in  producing 
the  result  claimed  for  their  combination.  (Swift  v.  Whis- 
sen,  3  Fish.,  343.) 

The  patent  raises  the  presumption  of  novelty  and  util- 
ity, and  the  degree  of  utility  will  not  be  very  rigidly  in- 
qu ired  into.  (Bell  v.  Daniels,  1  Fish . ,  372 ;  Teese  v.  Phelps, 
1  McAllis.,  49;  Potter  v.  Holland,  1  Fish.,  327.)  This 
presumption,  however,  is  not  conclusive,  and  it  may  be 
shown  that  the  invention  is  useless  and  worthless,  (Leev. 
Blandy,  2  Fish.,  89,)  or  that  the  thing  had  been  previously 
known.  (Coleman  v.Leesor,  MS.,  Ohio,  1850.) 

According  to  the  American  cases  the  result  alone,  when 
the  effects  produced  are  more  economical,  useful,  and 
beneficial,  or  a  better  article,  is  not  conclusive  evidence 
of  novelty  of  an  invention;  but  under  the  English  cases 
the  result  alone,  under  like  circumstances,  is  conclusive 
evidence  of  invention.  ( Yearsly  v.  Brookfield,  MS.  Appeal 
Cases,  D.  C.,  1853.) 

As  to  the  utility  of  an  invention,  upon  application  for 
a  patent,  the  testimony  of  disinterested,  practical  men 
will  be  received,  and  it  seems  will  overcome  apparent 
resemblance  to  other  inventions,  (Hoyt  ex  parte,  ib.,  1860 ; 


538  PROCEDURE  IN  THE  PATENT  OFFICE. 

Hayden  ex  parte,  ib. ;)  so  also  as  to  the  point  whether  an 
invention  furnishes  either  a  new  article  or  a  better  or 
cheaper  one.  (Arthur  ex  parte,  MS.,  ib.,  1861.)  But  it 
was  held  by  Cranch,  C.  J.,  in  the  case  of  Winslow  ex  parte, 
that  the  opinion  of  experts  or  scientific  and  practical  men, 
as  to  the  comparative  merits  of  two  inventions,  cannot 
affect  the  question  of  their  novelty.  (Ib.,  1850.) 

The  oath  of  the  patentee,  required  upon  his  application 
for  a  patent,  forms  a  legal  ground  for  the  presumption  of 
the  novelty  of  the  claim  until  the  contrary  is  proved. 
(Parker  v.  Stiles,  5  McLean,  60.) 

The  novelty  of  an  invention  can  be  defeated  by  a  prior 
use  only,  by  showing  that  such  prior  use  accomplished 
the  same  result  in  the  same  manner.  (Foote  v.  Silsby,  2 
Blatchf.,266.} 

Upon  application  for  a  patent  the  applicant  cannot  be 
required  to  furnish  evidence  of  the  practical  result  of  his 
invention.  (Seely  exparte,  MS.  Appeal  Cases,  I).  0.,  1853.) 

352.  EXAMPLES  OF  NOVELTY  AND  WANT  OF  NOVELTY. — 
If  nothing  is  shown  that  will  invalidate  a  patent  already 
granted,  another  will  not  be  allowed  for  the  same  thing, 
(Grell  v.  Kunhert,  Commissioners'  Decisions,  1869,  p.  5.)  A 
machine  which  is  designed  to  accomplish  a  certain  ob- 
ject is  'not  anticipated  by  one  which  accomplishes  the 
same  object  only  occasionally,  and  without  its  having 
been  intended,  (George  W.  Brown,  ib.,  10.)  A  patent  fur- 
nishes no  presumption  that  the  invention  was  made  be- 
fore the  filing  of  the  application,  (John  M.  Heck,  ib.,  19.) 
A  picture  frame  with  a  gilt-metal  bead  spun  upon  it 
from  a  flat  band  is  a  novelty,  although  such  a  frame  with 
a  gilt  bead  is  old,  as  well  as  the  mode  of  spinning  metal 
beads,  (George  Schneider,  ib.,  24.)  Placing  advertisements 


EVIDENCE.  539 

on  railway  tickets  having  been  practiced,  it  is  no  nov- 
elty to  designate  upon  them  places  of  business  in  the 
towns  at  the  end  of  the  route  for  which  they  issue,  ( A.  N. 
Towne,  ib.,  39.)  An  invention  is  not  to  be  deemed  old 
because  a  like  effect  has  been  produced  by  similar  means, 
if  it  was  only  incidentally  and  occasionally,  without  being 
intended,  (Henry  Waterman,  ib.,  51.)  Escutcheons  on 
stamps  and  the  like,  for  inclosing  distinctive  marks,  are 
old  and  not  patentable,  (Lewis  Abraham,  ib.,  59.)  An 
English  provisional  specification,  upon  which  no  patent 
was  issued,  can  be  treated  only  as  a  published  descrip- 
tion in  ascertaining  the  state  of  the  art,  (R.  0.  Lowrey, 
ib.,  85.)  A  die,  whose  surface  is  formed  by  electro  typing 
from  an  article  of  straw,  is  not  to  be  patented,  if  dies 
have  been  before  made  with  a  like  surface  electrotyped 
from  a  cast  or  model  of  straw,  (H.  Loewenberg,  ib.,  92.) 

In  the  application :  It  being  a  mechanical  expedient 
to  insert  metal  into  a  hub  in  order  to  diminish  friction, 
it  requires  no  invention  to  insert  soft  metal  in  the  eye  of 
a  wooden  sash  pulley  for  the  same  purpose,  ( Thomas  B. 
Stout,  ib.,  4.)  To  use  an  old  article  in  a  new  situation  ia 
not  of  itself  such  a  novelty  as  to  be  monopolized,  ( Thomas 
Kerr,  ib.,  16.)  The  application  of  a  known  device  may 
be  deemed  novel  if  it  lies  so  far  out  of  the  beaten  track 
as  not  to  be  suggested  by  the  former  use  of  it,  (Robert 
A.  Cheesebrough,  ib.,  18.)  It  is  a  mere  double  use  to  ap- 
ply to  several  steam  boilers  what  has  been  applied  to  one 
before,  though  of  a  different  kind,  (James  Murphy,  ib.,  24.) 
It  is  but  a  double  use  to  apply  to  the  casting  of  stove 
covers  aud  centers  the  same  process  which  had  been 
previously  employed  in  casting  fire  shovels  and  the  like, 
(E.  C.  Little,  ib.,  25.)  There  is  no  novelty  in  practicing 


540  PROCEDURE  IN  THE  PATENT  OFFICE. 

on  a  small  scale  what  has  been  practiced  on  a  large  one 
before,  or  in  practicing  it  for  a  different  purpose,  (  Wood- 
ward v.  Heist,  ib.,  34.)  There  is  no  invention  in  employ- 
ing upon  a  sheet-metal  photographic  frame  a  thumb- 
latch,  which  had  been  previously  employed  on  other 
photographic  frames,  (A.  Q.  Plait,  ib.,  42.)  The  use  of  a 
friction 'driver  in  a  type-setting  machine  may  be  the 
ground  of  a  patent,  though  old  in  itself,  if  it  has  never  been 
used  in  such  a  machine  before,  (Joseph  Thome,  ib.,  76.) 
A  claim  for  the  combination  of  a  pencil,  rubber  eraser, 
and  sleeve  to  unite  them,  is  not  answered  by  the  sleeve 
used  in  porte  crayons,  parasol  handles,  and  the  like,  ( Vos- 
burg  $•  Ludden,  ib.,  80.)  Land  vehicles  and  water  craft 
having  been  employed  as  advertising  mediums,  a  vessel 
constructed  and  especially  adapted  for  the  purpose  in  an 
ordinary  mechanical  way  is  not  to  be  regarded  as  an 
invention,  (A.  M.  Biedler,  ib.,  91.)  The  application  of  a 
device  to  a  mower,  which  has  been  previously  applied  to 
a  reaper  in  the  same  way,  is  a  mere  double  use,  (H.  M. 
Carter,  ib.,  96.)  A  jointed  rod  to  operate  a  caster  wheel 
in  a  harvester  being  old,  there  can  be  no  invention  in 
substituting  it  for  a  stiff  rod  in  the  place  where  the  latter 
had  been  used,  (//.  M.  Carter,  ib.,  96.)  Metallic  springs 
having  been  used  on  eye-glasses  to  close  them,  and  hav- 
ing been  used  on  articles  in  the  same  way  and  for  the 
same  purpose  as  the  applicant  uses  them  on  eye-glasses, 
his  device  is  not  entitled  to  favorable  consideration,  ( Wil- 
liam Linden,  ib.,  108.) 

In  the  material:  The  substitution  of  a  cheaper  ma- 
terial for  the  bed  of  a  billiard  table,  as  cement  for  glass 
and  the  like,  may  merit  favorable  consideration,  ( W.  E. 
Bond,  ib.,  17.)  The  substitution  for  an  unelastic  material 


EVIDENCE.  541 

of  one  possessing  elasticity  is  patentable,  where  that 
quality  is  made  to  subserve  a  useful  purpose,  as  in  rail- 
road chairs,  (6r.  E.  Deering,  ib.,  26.)  A  sheet-metal  box 
or  frame,  with  a  wired  flange,  being  known,  there  is  no 
novelty  in  substituting  it  for  a  wooden  or  a  cast-metal 
box  in  photographic  frames,  (A.  C.  Plait,  ib.,  42.)  A  trans- 
parent cylinder  surrounding  the  wick  tube  of  a  lamp, 
combined  with  a  deflector  above  and  an  air  distributor 
below,  would  not  be  patentable  had  an  opaque  cylinder 
been  used  in  the  same  combination,  (Joseph  Ridge,  ib.,  46.) 
Change  of  material  is  not  patentable  where  the  same 
material  has  already  been  used  for  the  same  general  pur- 
pose, and  is  merely  put  in  some  new  relation,  (Dimond  £ 
Doolittle,  ib.,  64.)  To  combine  with  a  top  rim  flexible 
metallic  lamp  shades  cannot  be  considered  novel,  as 
such  shades  are  old,  and  shades  not  metallic  have  been 
combined  with  such  a  rim,  (Dimond  $  Doolittle,  ib.,  64.) 
Although  a  process  was  alleged  to  consist  in  the  use  of 
alum  after  soap,  yet  if  the  specification  and  claim  repre- 
sent it  to  consist  in  the  use  of  soap  and  alum  in  the  com- 
bination, it  is  anticipated  by  a  published  process  in  which 
aluminous  soap  was  recommended  for  the  same  purpose, 
(R.  0.  Lowrey,ib.,85.)  Metallic  springs  for  eye-glasses 
are  anticipated  by  rubber  springs,  which  have  been  used 
on  them  in  a  similar  manner,  ( William  Linden,  ib.,  108.) 
In  the  form:  A  change  in  the  form  of  the  aperture 
which  it  closes  does  not  render  a  damper  worthy  of  a 
patent,  (E.  It.  Fenno,  ib.,  9.)  Introducing  additional 
wheels  into  gearing  does  not  alone  render  the  combina- 
tion legitimate,  (E.  Z.  Webster,  ib.,  9.)  Piano  stools  hav- 
ing been  made  with  iron  legs,  having  recesses  for  tips, 
and  chairs  with  wooden  legs  provided  with  dove-tailed 

46 


542  PROCEDURE  IN  THE  PATENT  OFFICE. 

recesses  for  tips,  and  with  rubber  cushions  inserted 
therein,  to  make  piano  stools  with  iron  legs,  constructed 
with  such  dove-tailed  recesses  and  provided  with  such 
cushions,  is  not  patentable,  (f*.  Y.  Brown,  ib.,  18.)  Tables 
vibrating  in  the  arc  of  a  circle  having  been  used  in  sew- 
ing machines  to  carry  the  work,  there  is  no  merit  in  sub- 
stituting a  table  for  a  horn  which  vibrated  vertically  in 
a  straight  line  in  another  machine,  (Daniel  Mills,  ib.,  25.) 
A  change  of  form  which  renders  an  instrument  more 
useful  is  patentable,  although  the  change  is  simple,  (/. 
D.  Warner,  ib.,  41.)  Substituting  a  broad-faced  stop  for 
a  pin  to  check  the  movement  of  the  arm  in  a  horse  rake 
should  not  be  patented,  (A.  T.  Barnes,  ib.,  81.) 

In  the  structure :  The  sanction  of  the  office  will  not 
be  given  to  extending  a  railroad  shoe  lengthwise,  so  as 
to  underlie  the  whole  rail,  (Watts  Cooke,  ib.,  6.)  Merely 
reversing  the  operation  of  an  apparatus  is  not  a  merit- 
orious invention,  (GeorgeW.  Blake,  ib.,  9.)  A  claim  for 
hoppers  within  the  furnace,  with  orifices  between  the 
boilers  for  feeding  sawdust  to  the  grate,  so  that  the  dust 
shall  be  dried,  is  not  answered  by  such  hoppers  outside 
of  the  furnace,  with  orifices  outside  of  the  boilers,  (Sam- 
uel Sykes,  ib.,  9.)  The  mere  reversal  of  two  parts  of  a 
device  in  their  position  upon  a  structure  is  not  to  be 
regarded  as  a  novelty,  (R.  A.  Leeds,  ib.,  13.)  To  add  a 
shoulder  for  receiving  a  spring  deserves  no  reward  from 
the  office,  (Sherrett  £  Warner,  ib.,  15.)  To  fit  a  tool  with 
awls  of  different  blades  where  one  has  been  used  before 
is  not  a  novel  conception  in  law,  ( Wilcpx  v.  Woodbury,  ib., 
17.)  It  is  a  mere  limitation  and  not  an  expansion  of 
an  invention,  to  make  the  case  of  a  centering  awl  whole 
which  another  has  made  with  a  split,  so  as  to  fit  coun- 


EVIDENCE.  543 

tersinks  of  different  sizes,  (ib.)  To  pack  bales  of  com- 
pressed feed  in  paper,  retained  by  slats  and  binders,  in- 
stead of  straw  retained  by  slats  as  usual,  is  an  improve- 
ment deserving  recognition,  (S.  W.  Adwen,  ib.,  23.)  To 
unite  with  steam  boilers  of  different  kinds  a  steam  gen- 
erator and  superheater,  such  as  has  been  united  with  one 
kind  of  boiler  before,  and  claim  the  combination,  is  not 
to  be  allowed,  (James  Murphy,  ib.,  24.)  Adding  a  hinged 
lid  to  a  vignette  plate,  and  changing  the  mode  of  holding 
it  in  position,  so  that  the  whole  frame  is  rendered  less 
cumbersome,  deserves  a  favorable  consideration,  (.A.  C. 
Plait,  ib.,  42.)  A  band  upon  an  open-grooved  arrow 
gun,  which  holds  the  arrow  in  the  groove  while  it  is  im- 
pelled by  the  spring,  is  not  anticipated  by  a  band  which 
holds  the  arrow  only  before  it  is  discharged,  nor  by  such 
guns  having  close  grooves  or  barrels,  (Charles  Robinson, 
ib.,  44.)  A  claim  for  a  short  stud,  projecting  downward 
from  the  head  of  a  railroad  spike,  might  possibly  be 
understood  to  embrace  a  flexible  barb  in  the  same  posi- 
tion ;  and  that  being  old,  the  claim  should  not  be  allowed, 
(P.  J.  Dwyer,  ib.,  57.)  Mere  omission  of  parts  does  not 
constitute  patentable  novelty;  but,  if  followed  by  reor- 
ganization, it  may,  (George  McRoy,  ib.,  58.)  Postage 
stamps  with  coupons,  to  be  detached  when  the  stamps 
are  applied,  in  order  to  cancel  them,  anticipate  revenue 
stamps  with  like  coupons,  although  the  coupons  of  the  lat- 
ter are  made  to  correspond  with  the  stamps,  and  are  pre- 
served in  order  to  check  frauds,  (Lewis  Abraham,  ib.,  59.) 
There  is  no  invention  in  changing  a  mill  from  a  hor- 
izontal to  a  vertical  position,  nor  in  applying  the  driving 
power  directly  to  the  main  roller  instead  of  applykig  it 
through  other  mechanism,  nor  in  incasing  two. bolts  in 


544  PROCEDURE  IN  THE  PATENT  OFFICE. 

one  casting,  (Stevens  $  Powers,  ib.,  63.)  To  spring  an 
elastic  body  of  a  lamp  shade  over  an  inflexible  rim  can- 
not be  regarded  as  novel,  an  elastic  rim  having  been 
before  sprung  into  an  inflexible  body,  (Dimond  $•  Doolittle, 
ib.,  64.)  A  ladies'  safety  belt,  made  with  elastic  pieces 
inserted,  having  been  allowed  a  patent,  it  is  an  improve- 
ment upon  it  to  make  the  belt  in  two  pieces,  connected 
by  two  buckles,  so  that  the  flaps  which  are  attached  are 
always  opposite  to  each  other,  (Bacheller  v.  Porter  $•  Ban- 
croft, ib.,  64.)  Pumps  having  been  made  in  sections, 
there  is  no  invention  in  making  hydrants  in  sections, 
( Charles  $  H.  Ackerson, ib.,  74.)  A  combination  in  a  type- 
setting machine  of  an  ejecting  finger,  a  key  to  select  the 
finger,  and  a  carrier  operated  by  a  power  separate  from 
the  key,  is  not  answered  by  a  combination  in  which  the 
key  both  selects  and  operates  the  finger,  (Joseph  Thome, 
ib.,  76.)  A  cover  combined  with  a  door  latch  sunk  into 
the  face  of  a  door  being  old,  as  well  as  a  projecting  cover 
arranged  on  the  face  of  a  door,  there  is  no  novelty  in  a 
projecting  cover  with  a  latch  so  arranged,  (P.  W.  Dean, 
ib.,  77.)  A  right  and  left  screw  having  been  used  with 
a  printer's  side-stick,  there  is  no  invention  in  operating 
a  quoin  with  one,  although  the  side-stick  can  be  used 
only  in  a  press  of  a  given  size  and  a  quoin  can  be  used 
in  any,  (F,  H.  Webb,  ib.,  78.)  Whether  a  claim  to  a  pen- 
cil, rubber  eraser,  and  sleeve  to  unite  them,  can  be  ex- 
tended to  cover  a  complete  cylinder  for  a  sleeve  without 
the  ring  by  which  the  semi-cylinders  composing  the  sleeve 
are  connected,  quere?  (Vosburg  £  Ludden,  ib.,  80.)  To 
drive  two  rollers,  one  by  the  gear  wheel  on  one  end  of 
a  shaft  and  the  other  by  another  gear  wheel  on  the  other 
end  of  the  same  shaft,  is  an  improvement  on  a  similar 


EVIDENCE.  545 

machine,  in  which  one  roller  is  driven  by  a  gear  wheel 
on  the  other,  (Powers  $•  Stevens,  ib.,  81.)  A  broad-faced 
stop  with  a  flange  extending  down  the  side  of  the  bar  on 
which  it  is  placed,  so  as  to  bear  the  blow  better,  when 
substituted  for  a  pin  to  check  the  movement  of  the  arm 
in  a  horse  rake,  is  patentable,  (A.  T.  Barnes,  ib.,  81.)  To 
make  a  latch  and  weighted  catch  in  one  piece,  which 
have  before  been  made  in  two  and  soldered  together,  is 
not  to  be  esteemed  an  invention,  (.#.  M.  Thompson,  ib.,  81.) 
.A  metal  shade  in  one  piece,  with  flexible  springs  on 
its  inner  periphery,  and  intended  to  rest  by  the  springs 
on  the  glass  chimney  of  a  lamp,  is  not  anticipated  by 
one  which  rests  by  three  inflexible  points  on  a  metal  cap 
over  the  chimney,  (M.  H.  Collins,  ib.,  82.)  If  a  pinion 
has  been  secured  upon  the  arbor  of  a  wheel  by  means  of 
a  screw  thread  cut  upon  the  arbor,  there  is  no  invention 
in  securing  the  wheel  upon  the  arbor  of  the  pinion  by 
the  same  means,  although  some  slight  advantages  are 
incident  to  the' latter  construction,  (J.  A.  Smith,  ib.,  83.) 
There  is  no  merit  in  forming  blocks  for  a  wooden  pave- 
ment with  a  rebate  on  one  side,  so  as  to  form  a  channel 
for  holding  concretes,  after  such  blocks  have  been  cut 
with  a  rebate  on  both  sides -for  the  same  purpose,  and 
the  same  effect  has  been  produced  by  using  long  blocks 
alternating  with  short  ones,  (L.  S.  Robbins,  ib.,  84.)  A 
cork  machine  in  which  the  cork  was  cut  tapering  by  four 
cutters,  which  were  made  to  approach  each  other  during 
the  process  by  means  of  a  collar  sliding  upon  the  shaft 
to  which  they  are  hinged,  does  not  anticipate  one  in  which 
the  cntter  is  in  one  piece,  but  with  slits,  and  the  edges 
approach  each  other  in  consequence  of  their  form,  (M. 
F.  Crocker,  administratrix,  ib.,  85.)  An  instrument  for 

46* 


546  PROCEDURE  IN  THE  PATENT  OFFICE. 

kindling  tires  by  gas,  which  is  supplied  to  it  by  a  flexible 
pipe  attached  to  a  tubular  handle,  is  not  anticipated  by 
a  like  instrument  for  kindling  fires  having  no  such  handle, 
although  it  was  suggested  that  it  might  be  used  with  gas, 
if  desired,  (Jeremiah  Kenney,  sr.,  ib.,  95.)  Where  the  dis- 
tance between  two  points  in  an  instrument  is  all  that 
distinguished  it  from  others,  and  that  distance  must  be 
varied  in  different  applications,  it  will  not  render  the  in- 
strument patentable,  ( I.  D.  Warner,  ib.,  109.)  In  a  paper- 
folding  machine  the  addition  of  a  spring  to  one  of  the 
rollers,  so  that  it  will  yield  to  the  folding  knife,  is  entitled 
to  favor,  (S.  C.  Forsaith,  assignee,  gc.,  ib.,  111.) 

353.  EXAMINATION  OF  PARTIES. — As  a  general  rule,  a 
party  in  a  patent  cause  cannot  be  a  witness  in  his  own 
behalf.  (Buckv.  Hermance,  1  Blatchf.,  324;  Foote  v.  Silsby, 
3  Blatchf.,  508.)  But  the  judiciary  act  of  September, 
1789,  §  34,  (1  Stats,  at  Large,  p.  92,)  in  adopting  the  laws 
of  the  several  States  as  rules  of  decisions  in  the  courts  of 
the  United  States,  embraced  laws  relating  to  evidence; 
and  where,  therefore,  under  the  laws  of  any  State,  parties 
may  be  examined  as  witnesses  in  their  own  behalf,  a 
plaintiff  in  an  action  in  the  United  States  courts  for  in- 
fringement of  his  patent  is  a  competent  witness  as  to  the 
issues  raised  therein.  (Haussknecht  v.  Olaypool,  1  Black, 
431;  Vance  v.  Campbell,  1  Black,  427.) 

Formerly  the  testimony  of  an  inventor  or  a  party  to 
the  record  was  not  admissible  in  an  interference,  ( Yearsly 
v.  White,  MS.  Appeal  Cases, D.  C.,  1853,)  even  though  he 
had  assigned  all  his  interest  in  an  invention  to  another. 
(Earns  v.  Richards,  ib.,  1859;  Hill  v.  Dunklee,  ib.,  1857; 
Gibbs  v.Johnson,  ib.,  1860;  G'Eielly  v.  Smith,  ib.,  1853; 
Barstow  v.  Swain,  ib.,  1860.)  Upon  this  point  Mr.  Chief 


EVIDENCE.  547 

Justice  Cartter  said,  (Irwin  v.  Merrill,  MS.  Appeal  Cases, 
D.  0.,  1864:)  "It  is  an  elemental  rule  of  evidence,  as 
repeatedly  declared  by  my  predecessors  and  now  affirm- 
ed, that  a  patentee  and  party  to  the  record  cannot  become 
a  witness  by  transfer  of  his  right  pending  the  proceed- 
ing. I  do  not  possess  the  right,  if  I  could  see  the  reason, 
for  removing  this  disability.  It  is  urged  by  the  Com- 
missioner that  the  legislature  and  courts  incline  to  listen 
to  the  testimony  of  parties.  If  the  federal  legislature, 
the  law-making  power  of  this  jurisdiction,  had  made 
parties  competent  as  witnesses,  I  should  not  hesitate  to 
follow,  but  Congress  has  failed  to  do  so.  *  *  *  * 
The  prevailing  rule  of  all  good  courts  is  to  administer 
the  law  as  they  find  it,  without  attempting  to  make  it." 

354.  PARTIES  IN  INTERFERENCE  CASES  MAY  TESTIFY. — 
Since  the  act  of  July  2,  1864,  relating  to  the  law  of  evi- 
dence in  the  District  of  Columbia,  parties  to  the  record 
in  interference  cases,  and  all  parties  interested  in  the 
same,  have  been  deemed  competent  to  give  evidence. 
The  provisions  of  the  act  are  as  follows: 

"  Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
on  the  trial  of  any  issue  joined,  or  of  any  matter  or  ques- 
tion, or  on  any  inquiry  arising  in  any  suit,  action,  or 
other  proceeding  in  any  court  of  justice  in  the  District 
of  Columbia,  or  before  any  person  having  by  law,  or  by 
consent  of  parties,  authority  to  hear,  receive,  and  exam- 
ine evidence  within  said  District,  the  parties  thereto,  and 
the  persons  in  whose  behalf  any  such  action  or  other  pro- 
ceeding may  be  brought  or  defended,  and  any  and  all  per- 
sons interested  in  the  same,  shall,  except  as  hereinafter 
excepted,be  competent  and  compellable  to  give  evidence, 


548  PROCEDURE  IN  THE  PATENT  OFFICE. 

either  viva  voce  or  by  deposition,  according  to  the  practice 
of  the  court,  on  behalf  of  either  or  any  of  the  parties  to  the 
said  action  or  other  proceeding:  Provided,  That  nothing 
herein  contained  shall  render  any  person  who  is  charged 
with  any  offense  in  any  criminal  proceeding  competent 
or  compellahle  to  give  evidence  for  or  against  himself  or 
herself,  or  shall  render  any  person  compellahle  to  answer 
any  question  tending  to  criminate  himself  or  herself,  or 
shall  in  any  criminal  proceeding  render  any  husband 
competent  or  compellable  to  give  evidence  for  or  against 
his  wife,  or  any  wife  competent  or  compellable  to  give 
evidence  for  or  against  her  husband,  or  in  any  proceeding 
instituted  in  consequence  of  adultery ;  nor  shall  any  hus- 
band be  compellable  to  disclose  any  communication  made 
to  him  by  his  wife  during  the  marriage,  nor  shall  any 
wife  be  compellable  to  disclose  any  communication  made 
to  her  by  her  husband  during  the  marriage.  Approved 
July  2,  1864." 

355.  COMPETENCY  OF  WITNESSES. — It  was  also  formerly 
held  that  the  testimony  of  a  witness  directly  or  indirectly 
interested  was  not  admissible  in  an  interference,  (Mar- 
shall v.  Mee,  MS.  Appeal  Cases,  D.  (7.,  1853,)  however  small 
the  amount  of  the  "interest  might  be,  (Arnold  v.  Bishop, 
MS.  Appeal  Cases,  D.  C.,  1841;)  but  by  the  act  of  July  2, 
1864,  the  disabilities  of  such  witnesses  were  removed,  and 
they  are  now  competent  and  compellable  to  testify. 

If  no  objection  is  made  to  the  competency  of  a  witness 
on  his  examination,  and  both  parties  examine  him,  it 
will  be  too  late  to  take  the  objection  afterward.  (Allen 
v.  Alter,  MS.  Appeal  Cases,  D.  C.,  1860.) 

In  determining  what  credit  is  to  be  given  to  the 
testimony  of  witnesses,  every  circumstance  affecting 


EVIDENCE.  549 

their  veracity  should  be  taken  into  calculation,  (Evans 
\.Hettick,  3  Wash.,  423,)  and  weight  should  be  given  to 
it  in  proportion  to  the  competency  of  the  witness  to 
judge  of  the  matter  sworn  to.  (Allen  v.  Hunter,  6  Mc- 
Lean, 310.)  The  presumption  of  law  is,  that  a  witness 
on  oath  testifies  honestly  until  the  contrary  is  known. 
(New  England  Screw  Company  v.  Sloan,  MS.  Appeal  Cases, 
D.  C.,  1853.)  The  testimony  of  witnesses  otherwise  in- 
competent may  be  received  and  considered  by  the  agree- 
ment of  the  parties.  ( Warner  v.  Goodyear,  ib.,  1846.) 

356.  EXPERTS. — To  determine  the  question  of  the 
mechanical  difference  of  machines,  the  law  permits  the 
opinions  of  men  called  experts  to  be  given  in  evidence, 
and  when  such  men  are  qualified,  and  free  from  bias, 
their  testimony  is  entitled  to  great  respect.  (Morris  v. 
Barret,  1  JFish.,  461.) 

The  patent  act  contemplates  two  classes  of  persons  as 
peculiarly  appropriate  witnesses  in  patent  cases,  namely: 
1st,  practical  mechanics,  to  determine  the  sufficiency  of 
the  specification  as  to  the  mode  of  constructing,  com- 
pounding, or  using  the  patent ;  2d,  scientific  and  theo- 
retic mechanics,  to  determine  whether  the  patented  thing 
is  substantially  new  in  its  structure  and  mode  of  opera- 
tion, or  a  mere  change  of  equivalents;  and  the  second 
class  is  by  far  the  higher  and  more  important  of  the  two. 
(Allen  v.  Blunt,  3  Story,  742.) 

The  opinions  of  professional  men  are  evidence  only  as 
to  matters  which  relate  to  their  profession,  (Brooks  v. 
Bicknell,  3  McLean,  447 ;)  thus,  in  medical  science  a  phy 
siciau  is  an  expert;  in  navigation,  a  sailor.  (Page  v. 
Ferry,  1  Fish.,  298.)  The  statute  defines  the  character 
of  an  expert  as  one  "  skilled  in  the  art  or  science"  to  which 


550  PROCEDURE  IN  THE  PATENT  OFFICE. 

his  opinion  appertains,  ($.;)  and  one  not  so  skilled  is 
not  a  fit  person  to  testify  as  to  whether  a  specification 
contains,  a  sufficient  description.  (Poppenhausen  v.  New 
York  6r.  P.  C.  Company,  4  Blatchf.;  Allen  v.  Hunter,  6 
McLean,  307.) 

The  testimony  of  experts  is  useful  to  show  the  opera- 
tion of  devices;  but  when  experts  undertake  to  tell  what 
a  patent  is  for,  they  assume  the  duty  of  the  court;  and 
when  they  undertake  to  say  what  is  or  is  not  a  violation 
of  the  patent,  they  not  only  assume  the  duty  of  the  court, 
but  the  jury.  ( Waterbury  Brass  Company  v.  New  York 
and  Brooklyn  Brass  Company,  3  Fish.,  43.) 

Experts  may  be  examined  to  explain  the  meaning  of 
terms  of  art  on  the  principle,  Caique  in  sua  arte  credendum, 
(Corning  v.  Burden,  15  How.,  270;  Winans  v.  New  York 
and  Erie  Railroad  Company,  21  How.,  100,)  or  as  to  whether 
a  patent  is  void  for  uncertainty,  (  Washburn  v.  Gould,,  3 
Story,  138,)  or  to  explain  the  difference  between  an  origi- 
nal and  reissued  patent,  (Philadelphia  and  Trenton  Railroad 
v.  Slimson,  14  Pet.,  462,)  or  as  to  the  identity  of  different 
mechanical  structures,  (Parker  v.  Stiles,  5  McLean,  64,)  or 
the  state  of  the  art  at  any  given  time,  (  Winans  v.  New 
York  and  Erie  Railroad,  21  How.,  100,)  or  to  explain  ma- 
chines, models,  and  drawings  exhibited,  (ib.;)  but  their 
opinion  cannot  be  dignified  with  the  mantle  of  author- 
ity, even  on  questions  of  science.  (French  v.  Rogers,  1 
Fish.,  133.) 


REISSUES. 


551 


XXI.  Reissues. 


SEC. 

357.  Resume  of  the  law. 

358.  Provisions  act  July,  1870. 

359.  To  whom  granted. 

360.  Application  made  by  inventor 

only  if  living. 

361.  Concurrence  of  parties. 

362.  Rights  of  assignees. 
363:  Statement  of  title. 

364.  Application  acted  on  as  soon 

as  filed. 
365. .  Defects  cured  by  reissue. 

366.  There  may  be  more  than  one 

reissue. 

367.  Use  under  defective  patent. 

368.  Reissue  during  extended  term. 

369.  Clerical  error,  fault  of  office. 


SEC. 

370.  Through  fault  of  applicant. 

371.  Divisions  of  a  reissue. 

372.  Action  of  the  Commissioner. 

373.  Reissue  must  be  for  the  same 

invention.  /• 

374.  Specification  and  claim  subject 

to  revision. 

375.  Surrender  does  not  take  effect 

until  reissue  is  granted. 

376.  Rights  conferred  by  reissue. 

377.  Petition  for  reissue  by  inventor. 

378.  Petition  for  reissue  by  assignee. 

379.  Oath  by  applicant  for  reissue  by 

inventor. 

380.  Oath  by  applicant  for  reissue  by 

assignee. 


357.  RESUME  OF  THE  LAW  CONCERNING  REISSUES. — Be- 
fore the  British  act  of  5  and  6  Wm.  IV.  c.  83,  1835,  the 
consequence  of  a  defect  in  the  specification,  in  England, 
was  an  absolute  loss  of  the  privilege  of  the  patent  right. 
By  the  first  section  of  that  act  the  patentee  or  his  as- 
signee "may,  with  the  leave  of  the  attorney  or  solicitor 
general,  enter  a  disclaimer  of  any  part  of  either  the  title 
of  the  invention  or  of  the  specification,  stating  the  rea- 
son for  such  disclaimer,  or  may,  with  such  leave,  enter 
a  memorandum  of  any  alteration  in  the  said  title  or  speci- 
fication, not  being  such  disclaimer,  or  such  alteration  as 
shall  extend  the  exclusive  right  granted  by  the  patent;" 
and  such  disclaimer  or  memorandum  is  thereafter  to  be 
considered  a  part  of  the  title  or  specification. 

In  the  early  American  cases,  after  the  act  of  1793,  it 


\ 

552  PROCEDURE  IN  THE  PATENT  OFFICE. 

appears  to  have  been  supposed  that  the  law  had  by  that 
act  been  varied  from  the  English;  so  that  the  patent 
right  was  forfeited  and  lost  only  in  case  of  the  defects 
speciiied  in  the  sixth  section  being  designed  and  fraudu- 
lent. It  is  provided  by  that  section  that,  in  a  case  for 
an  infringement,  the  defendant  may  give  in  evidence,  in 
his  defense,  "  that  the  specification  does  not  contain  the 
whole  truth  relative  to  his  discovery,  or  that  it  contains 
more  than  is  necessary  to  produce  the  described  effect, 
which  concealment  or  addition  shall  fully  appear  to  have 
been  made  for  the  purpose  of  deceiving  the  public." 

Mr.  Justice  Story,  in  giving  an  opinion  in  the  circuit 
court,  in  1813,  on  an  examination  of  this  section,  re- 
marked :  "  We  think  that  the  manifest  intention  of  the 
legislature  was  not  to  allow  any  defect  or  concealment 
in  a  specification  to  avoid  the  patent,  unless  it  arose 
from  an  intention  to  deceive  the  public."  ( Whittemore  v. 
Cutter,  1  Gall.,  429.) 

In  the  same  year,  Mr.  Justice  Washington,  instruct- 
ing the  jury  in  the  circuit  court  of  the  United  States  for 
Pennsylvania,  said  on  the  subject  of  concealment,  "the 
matters  not  disclosed  must  appear  to  have  been  con- 
cealed for  the  purpose  of  deceiving  the  public,  in  order 
to  invalidate  the  patent."  (Parkv.  Little,  3  Wash.,  196.) 

In  1817,  again,  these  judges  appear  still  to  have  enter- 
tained the  same  opinion.  (Lowell v.  Lewis,  1  Mass.,  182 ; 
Gray  v.  James,  1  Pet.  O.  0.,  401.)  But  it  was,  at  the  same 
time,  remarked  by  Mr.  Justice  Story,  that  the  doctrine 
was  liable  to  grave  objections  on  the  score  of  expe- 
diency. (Whittemore  v.  Cutter,  1  Gall.,  429.)  And  it  was 
subsequently  abandoned,  and  the  English  doctrine  adopt- 
ed, that  a  defect  in  the  specification,  from  want  of  com- 


REISSUES.  553 

pliance  with  the  requisitions  of  the  third  section  of  the 
act  of  1793,  rendered  the  patent  void;  but  that,  if  the 
defect  arose  from  mistake,  a  new  patent  could  be  taken 
out  for  the  unexpired  part  of  the  term.  In  this  respect 
our  law  on  this  subject  differed  from  the  English. 

This  doctrine,  as  to  the  surrender  and  renewal  of  the 
patent,  was  suggested  by  Mr.  Justice  Thompson  in  a 
case  that  came  before  him  in  1824,  in  which  he  remarked, 
"I  see  no  insuperable  objection  to  entering  a  vacatur  of 
the  patent  of  record  in  the  Department  of  State,  if  taken 
out  inadvertently  and  by  mistake.  All  the  proceedings 
in  that  department,  on  the  subject  of  patents,  are  ex 
parte,  except  in  the  case  of  interfering  applications. 
The  department  act  rather  ministerially  than  judicially, 
and  upon  the  representation  of  the  applicant,  without 
entering  into  the  question  of  right,  and  there  seems  to 
be  no  good  reason  why,  on  a  like  ex  parte  application, 
the  patent  may  not  be  surrendered,  and  canceled  of 
record,  if  no  misconduct  be  imputable  to  the  patentee 
in  taking  it  out.  And  in  such  case,  as  the  exclusive 
right  is  not  to  exceed  fourteen  years,  the  second  patent 
may  be  limited  according  to  circumstances,  and  thereby 
secure  both  to  the  patentee  and  the  public  their  respect- 
ive rights."  (Morris  v.  Huntington,  1  Paine,  355.) 

This  doctrine  was  afterward  distinctly  adopted  by  the 
Supreme  Court.  (Townsend  v.  Raymond,  6  Pet.,  220; 
Shaw  v.  Cooper,  7  Pet.,  292.) 

In  confirmation  of  the  construction  thus  given  to  the 
patent  law  of  1793  the  fifth  section  of  the  additional 
law  of  1832  was  passed,  by  which  it  is  enacted  that 
"whenever  any  patent  shall  be  invalid  or  inoperative,  by 
reason  that  any  of  the  terms  and  conditions  prescribed 

47 


554  PROCEDURE  IN  THE  PATENT  OFFICE. 

in  the  third  section  in  the  said  act  (of  1793)  have  not, 
by  inadvertence,  accident,  or  mistake,  and  without  any 
fraudulent  or  deceptive  intention,  been  complied  with 
on  the  part  of  the  said  inventor,  it  shall  be  lawful  for 
the  Secretary  of  State,  upon  the  surrender  to  him  of 
such  patent,  to  cause  a  new  one  to  be  granted  to  the 
said  inventor,  for  the  same  invention,  for  the  residue  of 
the  period  then  unexpired,  for  which  the  original  patent 
was  granted,  upon  his  compliance  with  the  terms  and 
conditions  prescribed  in  the  said  third  section  of  said 
act." 

The  law  was  thus  put  upon  a  liberal  footing  in  respect 
to  patentees,  and  the  act  of  1836,  section  thirteen,  made 
a  similar  provision.  (Phillips  on  Patents,  301.) 

358.  PROVISIONS  OF  THE  ACT  OF  JULY  8,  1870. — When- 
ever any  patent  is  inoperative  or  invalid,  by  reason  of  a 
defective  or  insufficient  specification,  or  by  reason  of  the 
patentee  claiming  as  his  own  invention  or  discovery 
more  than  he  'had  a  right  to  claim  as  new,  if  the  error 
has  arisen  by  inadvertence,  accident,  or  mistake,  and 
without  any  fraudulent  or  deceptive  intention,  the  Com- 
missioner shall,  on  the  surrender  of  such  patent  and 
the  payment  of  the  duty  required  by  law,  cause  a  new 
patent  for  the  -same  invention,  and  in  accordance  with 
the  corrected  specifications,  to  be  issued  to  the  pat- 
entee, or,  in  the  case  of  his  death  or  assignment  of  the 
whole  or  any  undivided  part  of  the  original  patent,  to 
his  executors,  administrators,  or  assigns,  for  the  unex- 
pired part  of  the  term  of  the  original  patent,  the  sur- 
render of  which  shall  take  effect  upon  the  issue  of  the 
amended  patent;  and  the  Commissioner  may,  in  his  dis- 
cretion, cause  several  patents  to  be  issued  for  distinct 


REISSUES.  555 

and  separate  parts  of  the  thing  patented,  upon  demand 
of  the  applicant,  and  upon  payment  of  the  required  fee 
for  a  reissue  of  each  of  such  reissued  letters  patent. 
And  the  specification  and  claim  in  every  such  case  shall 
be  subject  to  revision  and  restriction  in  the  same  man- 
ner as  original  applications  are.  And  the  patent  so 
reissued,  together  with  the  corrected  specification,  shall 
have  the  effect  and  operation  in  law,  on  the  trial  of  all 
actions  for  causes  thereafter  arising,  as  though  the  same 
had  been  originally  filed  in  such  corrected  form ;  but  no 
new  matter  shall  be  introduced  into  the  specification, 
nor,  in  case  of  a  machine  patent,  shall  the  model  or 
drawings  be  amended,  except  each  by  the  other;  but 
when  there  is  neither  model  nor  drawing,  amendments 
may  be  made  upon  proof  satisfactory  to  the  Commis- 
sioner that  such  new  matter  or  amendment  was  a  part 
of  the  original  invention,  and  was  omitted  from  the  spe- 
cification by  inadvertence,  accident,  or  mistake,  as  afore- 
said. (Act  of  July  8,  1870,  §  53.) 

359.  To  WHOM  GRANTED. — A  reissue  is  granted  to 
the  original  patentee,  his  legal  representatives,  or  the 
assignees  of  the  entire  interest,  when,  by  reason  of  a  de- 
fective or  insufficient  specification,  the  original  patent  is 
inoperative  or  invalid,  provided  the  error  has  arisen  from 
inadvertence,  accident,  or  mistake,  and  without  any 
fraudulent  or  deceptive  intention.  (Patent  Office  Rules, 
July,  1870.) 

The  sole  right  to  surrender  is  given,  1,  to  the  patentee 
if  he  is  alive  and  has  made  no  assignment  of  the  original 
patent;  2,  to  the  executors  and  administrators  of  the 
patent  after  his  decease,  when  there  has  been  no  such 
assignment;  3,  to  the  assignee,  after  the  death  of  the 


556  PROCEDURE  IN  THE  PATENT  OFFICE. 

inventor,  when  there  has  been  an  assignment  of  the 
original  patent.  Where,  however,  there  has  been  an 
assignment  of  an  undivided  part  of  the  whole  patent 
the  assignee  of  such  part  and  the  patentee  become  joint 
owners  of  the  patent,  and  should  join  in  the  surrender; 
and  if  they  do  not,  it  will  be  invalid  unless  the  part 
owner  not  joining  shall  ratify  it.  But  a  licensee  or  one 
who  has  had  transferred  to  him  a  less  or  different  inter- 
est than  either  the  interest  in  the  whole  patent  or  an 
undivided  part  of  such  interest,  or  an  exclusive  sectional 
interest,  has  no  legal  right  as  assignee  to  surrender,  and 
a  surrender  without  his  concurrence  is  valid.  (Potter  v. 
Holland,  I  Fish.,  327.) 

360.  APPLICATION  MUST  BE  MADE  BY  INVENTOR,  IF  LIV- 
ING, IN  CASE  OF  ASSIGNMENT. — Patents  may  be  granted 
and  issued  or  reissued  to  the  assignee  of  the  inventor  or 
discoverer,  the  assignment  thereof  being  first  entered  of 
record  in  the  Patent  Office;  but  in  such  case  the  appli- 
cation for  the  patent  shall  be  made  and  the  specification 
sworn  to  by  the  inventor  or  discoverer,  and  also,  if  he 
be  living,  in  case  of  an  application  for  reissue,  (Act  of 
July  8, 1870,  §  33;)  but  if  the  inventor  be  dead,  the  appli- 
cation may  be  made  and  the  specification  sworn  to  by 
assignees. 

361.  CONCURRENCE  OF  PARTIES. — The  petition  must 
show  that  all  parties  owning  an  undivided  interest  in  the 
patent  concur  in  the  surrender.    (Patent  Office  Rules,  July, 
1870.) 

362.  RIGHTS  OF  ASSIGNEES. — It  is  not  in  the  power  of 
a  patentee,  by  the  surrender  of  his  patent,  to  affect  the 
rights  of  third  persons  to  whom  he  has  previously  by 
assignment  passed  his  interest  in  a  whole  or  a  part  of 


REISSUES.  557 

the  patent,  without  the  consent  of  such  assignees.  (Potter 
v.  Holland,  1  Fish.,  327;  Woodworth  v.  Stone,  3  Story, 
750;  Smith  v.  Mercer,  4  West.  Law  Jour.,  52;  McBurney 
v.  Goodyear,  11  (7wsA.,  571.)  The  reissued  patent  oper- 
ates from  the  commencement  of  the  original,  and  will 
inure  to  the  benefit  of  assignees  who  became  such  before 
the  reissue,  although  no  assignment  is  made  to  them 
after  the  reissue.  (  Woodworth  v.  Hall,  1  Wood.  $•  Minot, 
248.) 

A  surrender  of  letters  patent  renders  void  all  assign- 
ments so  far  as  those  are  concerned  who  assent  to  the 
surrender.  It  is  necessary  that  a  prior  assignee  should 
have  a  new  assignment  before  he  can  maintain  an  action 
for  an  invasion  of  the  patent.  (Gibson  v.  Richards,  Index 
Pat.  Dec., No.  376.)  Consent  may  be  manifested  by  join- 
ing in  the  surrender,  or  previously  authorizing  it,  or  sub- 
sequently ratifying  or  approving  it;  and  taking  an  ad- 
vantage and  benefit  of  it  would  be  a  ratification;  and 
when  so  consented  to  the  rights  of  the  party  consenting  in 
and  to  the  old  patent  are  forever  gone.  (Potter  v.  Holland 
1  Fish.,  327.)  Assignees  are  not  compelled  to  take  under 
the  reissued  patent,  and  give  up  the  right  had  under  the 
old  one.  They  may,  if  they  prefer,  rest  their  claims  upon 
the  specification  as  it  stood  when  they  purchased  their 
right,  (Smith  v.  Mercer,  4  West.  Law  Jour.,  52;)  and  there 
may  be  one  claim  of  fight  under  the  old  patent  for  one 
section  of  country  and  a  different  claim  of  right  under 
the  reissued  patent  for  another  section  of  country,  (Pot- 
ter v.  Holland,  1  Fish.,  327.) 

Where  there  has  been  an  assignment  of  an  undivided 
part  of  the  whole  original  patent,  in  such  case  the  as- 
signee of  such  a  part  and  the  patentee  become  joint 
47* 


558  PROCEDURE  IN  THE  PATENT  OFFICE. 

owners  of  the  patent,  and  should  join  in  the  surrender; 
and,  if  they  do  not,  it  will  be  invalid,  unless  the  part 
owner  not  joining  shall  ratify  it.  (Potter  v.  Holland,  1 
Fish.,  327.) 

A  person  to  whom  the  patentee  has  passed  his  inter- 
est in  a  part  of  the  old  patent,  upon  the  surrender  of  the 
same  by  the  patentee,  and  obtaining  a  reissued  patent, 
is  entitled  to  the  same  right,  under  the  reissued  patent, 
that  he  had  to  the  old  one.  (Ib.)  He  may,  however, 
elect  to  hold  under  the  old  patent,  and  it  is  not  a  valid 
objection,  that  in  such  case  there  would  be  different 
claims  of  right  in  the  same  invention  secured  to  differ- 
ent sectional  owners.  (Ib.) 

A  reissue  does  not  inure  to  the  benefit  of  a  prior  as- 
signee. He  takes  by  ratification,  not  by  inurement. 
(Burdell  v.  Denig,  2  Fish.,  589.) 

363.  STATEMENT  OF  TITLE. — A  statement  under  oath 
of  the  title  of  the  party  proposing  to  surrender  must  be 
filed  with  the  application.    (Ib.} 

364.  APPLICATION  FOR  REISSUE  ACTED  ON  AS  SOON  AS 
FILED. — Reissued  patents  expire  at  the  end  of  the  term 
for  which  the  original  patent  was  granted ;  for  this  rea- 
son applications  for  reissue  will  be  acted  on  as  soon  as 
filed.     (Ib.) 

365.  DEFECTS  CURED  BY  REISSUE. — The  act  contemplates 
two  classes  of  cases  in  which  reissues  may  be  granted: 
First,  where  the  patent  is  inoperative  and  invalid  by  rea- 
son of  a  defective  or  insufficient  specification;  second, 
where  the  objection  arises  by  reason  of  the  patentee  claim- 
ing as  his  own  invention  more  than  he  had  a  right  to 
claim  as  new,  (Goodyear  v.  Day,  MS.  New  Jersey,  1852;) 
but  whether  the  defect  be  in  the  specification  or  claim,  the 


REISSUES.  559 

patentee  may  surrender  his  patent,  and  by  an  amended 
specification  or  claim  cure  the  defect. 

There  is  nothing  in  the  act  which  requires  the  pat- 
entee to  claim  all  things  in  a  reissued  patent  which  were 
claimed  as  his  original  invention  in  his  original  patent. 
A  specification  may  be  defective  as  well  by  an  excess  of 
claim  as  by  a  defect  in  the  mode  of  stating  it,  and  the 
inventor  is  always  at  liberty  to  omit  part  of  his  original 
invention  if  he  deems  it  expedient,  ( Carver  v.  Braintree 
Company,  2  Story,  439;)  and  he  is  not  bound  to  include  in 
his  reissued  patent  improvements  to  which  he  may  have 
been  actually  entitled  under  the  original  patent,  (Knight  v. 
Baltimore  and  Ohio  Railroad  Company,  3  Fish. ,  1 ;)  and  where 
the  claim  in  the  original  was  for  a  new  article  of  manu- 
facture, and  in  the  reissue  it  was  for  a  combination  and 
arrangement  of  the  parts,it  was  held  that  the  former  claim 
was  unfortunate,  as  changes  could  be  made  to  avoid  the 
patent  while  retaining  the  principle  of  the  invention, 
and  that  the  defect  was  curable  by  reissue.  (Middletown 
Tool  Company  v.  Judd,  3  Fish.,  141.) 

It  is  not  necessary  that  there  should  have  been  any  ad- 
judication upon  the  patent  in  order  to  justify  a  reissue; 
the  oath  of  the  party  as  to  the  existence  of  the  facts  re- 
quired for  a  reissue  is  enough,  (Bull  ex  parte,  MS.  Ap- 
peal Cases,  I860;)  and  though  the  old  specification  had 
been  adjudged  good,  yet  if  defective,  so  as  to  be  open 
to  litigation,  and  thus  somewhat  "inoperative,"  the  Com- 
missioner may  reissue  it.  (Woodworth  v.  Edwards,  3 
Wood.  £  Minot,  126.) 

The  disclaimer  of  a  part  of  an  invention  in  the  original 
application,  provided  such  disclaimer  arose  from  inad- 
vertency, accident,  or  mistake,  will  not  prevent  the  pat- 


560  PROCEDURE  IN  THE  PATENT  OFFICE. 

entee  from  embracing  the  part  so  disclaimed  in  a  reissue 
of  his  patent,  (Hay den  ex  parte,  MS.  Appeal  Cases,  D.  (7., 
I860,)  and  a  statement  in  an  original  patent  that  a  part 
is  old  does  not  prevent  such  part  being  claimed  in  a  re- 
issued patent,  though  it  seems  it  would  have  that  effect 
if  made  advisedly.  (Laidly  v.  James,  MS.  Appeal  Cases, 
D.  C.,  I860.) 

366.  THERE  MAY  BE  MORE  THAN  ONE  REISSUE. — There 
may  be  more  than  one  reissue  of  the  same  patent.  There 
is  nothing  in  the  patent  acts  that  limits  the  correction 
of  errors  to  such  as  may  have  been  the  first  discovered. 
(French  v.  Rogers,  1  Fish.,  133.)  The  surrender  and  re- 
issue, no  matter  how  often  they  recur,  are  reciprocal, 
each  in  consideration  of  the  other,  and  form  together 
but  a  single  act;  and  it  is  for  the  public  interest  that  the 
surrender  and  reissue  should  be  allowed  to  follow  each 
other  as  often  as  the  patentee  is  content  to  be  more  spe- 
cific or  modest  in  his  claims.  (Ib.} 

But  where  the  patentee  surrendered  his  original  patent 
and  obtained  a  reissue,  and  afterwards  surrendered  the 
reissued  patent  and  obtained  a  second  reissue,  it  was  held 
that  the  original  patenthavingbeen  canceled  when  thefirst 
reissue  was  granted,  the  second  reissue  was  not  valid 
unless  the  improvement  described  in  it  was  in  its  princi- 
ple and  mode  of  operation  the  same  with  that  intended 
to  be  described  in  the  first  reissue.  (Knight  v.  Baltimore 
and  Ohio  Railroad  Company,  3  Fish.,  1.) 

When  a  patent  has  issued  in  one  division  of  an  appli- 
cation for  a  reissue  the  original  patent  is  dead,  and  no 
new  division  can  be  entertained.  (  Whitely  and  Gage  ex 
•parte,  Commissioners'  Decisions,  1869,  p.  63.) 

And  after  one  patent  has  issued,  upon  an  application 


REISSUES.  561 

for  a  reissue  the  original  patent  is  annulled,  and  no  new 
division  can  be  entertained. 

In  the  case  of  Whitely  ex  parte,  (MS.  Appeal  Cases,  D. 
C.,  1869,)  it  was  held  by  Chief  Justice  Cartter  that  the 
surrender  of  a  patent  and  letters  patent  granted  in 
reissue,  for  the  same  subject,  upon  such  surrender  is 
death  to  the  first  patent  and  life  to  the  second.  What- 
ever of  title  to  the  subject  of  the  patent  survives  is  to  be 
found  in  the  letters  of  reissue,  and  not  in  the  patent  out 
of  which  such  letters  grow;  and  any  application  made 
thereafter  for  reissue  should  be  based  upon  the  reissued 
letters  patent. 

367.  USE  UNDER  THE  DEFECTIVE  PATENT. — ~No  prior  use 
of  an  invention  under  a  defective  patent  can  take  away  the 
right  to  surrender  and  reissue  such  patent,  or  authorize 
a  use  under  the  renewed  patent,  (Stimsonv.  Western  Rail- 
road, 4  How.,  402;)  and  the  fact  that  the  thing  described 
in  an  original  patent  had  been  in  public  use  in  the  inter- 
val between  the  issue  of  the  original  and  reissue,  does  not 
exclude  an  inventor  from  the  right  to  resume  them  in  a 
reissue.     (Goodyear  v. Day,  MS.,  N.  J.,  1852.) 

368.  REISSUE  DURING  EXTENDED  TERM. — The  Commis- 
sioner can  lawfully  reissue  letters  patent  on  an  amended 
specification  after  the  expiration  of  the  original  patent 
and  during  the  existence  of  an  extended  term.     (  Wilson 
v.  Rosseau,  4  How. ,  688.)     The  extended  patent  of  twenty- 
one  years  is,  in  such  case,  to  be  regarded  as  the  "  original 
patent,"  within  the  meaning  of  §  13  of  the  act  of  1836, 
(Gibson  v.  Harris.,  1  Blatchf.,  169;)  and  the  reissue  of  a 
patent  extended   by  act  of  Congress   to  twenty-eight 
years,  after  it  had  been  previously  extended  to  twenty- 
one  years,  stands  on   the   same  footing.     There  is  no 


562  PROCEDURE  LN  THE  PATENT  OFFICE. 

difference  in  principle.      (/&,;  Woodworth  v.  Edwards,  3 
Wood.  $  Minot,  126.) 
369.  A  CLERICAL  ERROR  WILL  BE  CORRECTED  WITHOUT 

FEES  IF  IT  OCCURRED  THROUGH  THE  FAULT  OF  THE  OFFICE. — 

Before  the  passage  of  the  act  of  1836,  the  Supreme  Court 
of  the  United  States  held,  (Grant  v.  Raymond,  6  Pet.,  242; 
»Shaw  v.  Cooper,  7  Pet,  314,)  that  a  defective  patent  might 
be  surrendered,  canceled,  and  reissued  to  correct  an  hon- 
est mistake  on  the  part  of  the  patentee,  or  an  error  com- 
mitted by  the  office. 

The  13th  section  of  the  act  of  1836  provides  for  sur- 
renders and  reissues  in  two  specified  cases,  but  is  silent 
as  to  all  other  grounds  of  surrender.  It  is  believed  that 
the  right  of  the  patentee  to  surrender  his  patent  for  the 
correction  of  errors  committed  by  the  office  remains  un- 
affected by  the  legislation  contained  in  that  section.  It 
could  never  have  been  the  intention  of  the  legislature  to 
restrict  the  correction  of  mistakes  to  those  enumerated, 
or  to  declare  that  the  errors  of  the  office  should  not  be 
reformed  as  promptly  as  those  of  the  patentee. 

Accordingly  it  has  been  the  practice  of  the  office  to 
correct  all  errors  in  parties'  names,  titles,  dates,  and  all 
omissions  or  insertions  of  words  made  by  the  fault  of  the 
office,  upon  the  surrender  of  a  patent,  without  fee,  but 
to  require  the  patentee,  when  seeking  the  correction  of 
his  own  mistakes,  to  pay  the  fee  and  conform  to  the  pro- 
visions made  for  cases  of  reissue. 

In  Dental  Vulcanite  Company  v.  Wetherbee,  3  Fish.,  87, 
a  patent  thus  corrected  came  under  the  review  of  the 
full  court  in  the  district  of  Massachusetts.  In  that  case, 
after  an  assignment  of  the  entire  interest  of  an  inventor, 
the  application  for  reissue  was  signed  by  the  patentee, 


REISSUES.  563 

and  the  reissue  was  granted  to  him  instead  of  to  his 
assignee.  The  court,  by  Mr.  Justice  Clifford,  say: 
"Whether  the  mistake  was  first  discovered  by  the  Pat- 
ent Office,  or  by  the  party  named  as  patentee,  does  not 
appear,  but  it  does  appear  that  the  letters  patent  were 
immediately  returned  to  the  Commissioner,  and  the  mis- 
take was  corrected  as  a  clerical  error.  Unless  it  could 
be  corrected  as  a  clerical  error  it  could  not  be  corrected 
at  all,  as  it  was  clearly  not  a  case  falling  within  the  pro- 
vision authorizing  a  surrender  and  reissue."  Again: 
"Second  surrender  was  asked  merely  to  correct  an  error 
of  date  in  the  first  reissue,  and  it  is  obvious  that  the  sug- 
gestion of  error  was  well  founded,  and  that  the  correc- 
tion requested  was  one  proper  to  be  made." 

In  Detmold's  ca;e,  (4  Opinions,  335,)  Nelson,  Attorney 
General,  held  that  the  date  of  a  patent  maybe  altered  to 
correspond  with  that  of  a  foreign  patent,  previously  taken 
out  by  the  inventor,  where  the  mistake  has  not  arisen 
from  any  fraudulent  or  deceptive  intention.  (See  also 
Smith  v.  Ely,  5  McLean,  78-86 ;  James  Cochran,  Commis- 
sioners' Decisions,  1867,  p.  60.) 

370.  ERROR  THROUGH  THE  FAULT  or  THE  PATENTEE  WILL 
BE  CORRECTED  ONLY  BY  REISSUE  ON  THE  USUAL  TERMS. — 
A  patentee  when  seeking  the  correction  of  his  own  mis- 
takes is  required  to  pay  the  fee  required  by  law  and  con- 
form to  the  provisions  made  for  cases  of  reissue.  (Ib.)  In 
the  case  of  Havemeyer  ex  parte  the  Commissioner  says : 
"This  is  a  motion  on  the  part  of  the  American  Papier 
Mache  Company  for  the  correction  of  an  alleged  cler- 
ical error.  The  facts  are  briefly  as  follows  :  Letters  pat- 
ent for  an  improvement  in  the  manufacture  of  sugar 
molds,  and  other  articles,  were  granted  to  Carl  Kronig 


564  PROCEDURE  IN  THE  PATENT  OFFICE. 

in  1864.  In  1868,  this  patent  was  returned  with  the  fol- 
lowing petition:  'The  petition  of  Theodore  A.  Have- 
meyer,  J.  Lawrence  Elder,  and  Charles  F.  Loosey,  of 
"New  York  city,  respectfully  represents :  That  your  pe- 
titioners are  the  sole  owners,  by  assignment,  entered  of 
record,  of  letters  patent  of  the  United  States,  granted  to 
Carl  Kronig,  of  Vienna,  in  the  Empire  of  Austria.  They 
therefore  pray  that  they  may  be  permitted  to  surrender 
the  said  letters  patent,  and  that  the  same  may  be  can- 
celed and  new  letters  patent  issued  to  your  petitioners  on 
an  amended  specification,'  &c. 

-  "In  the  letter  transmitting  this  application  mention 
was  made  of  an  inclosed  assignment  from  Havemeyer, 
Elder  &  Loosey  to  the  American  Papier  Mache  Com- 
pany for  record,  but  no  request  was  made  for  the  issue 
of  letters  patent  to  <the  last  assignees. 

"The  patent  was  issued  April  14,  1868,  in  accordance 
with  the  request  of  the  petition,  to  Havemeyer,  Elder  & 
Loosey.  The  American  Papier  Mache*  Company  now 
comes  in,  after  a  lapse  of  nearly  two  years,  and  asserts 
that  the  patent  should  have  issued  to  it,  and  that  the  fail- 
ure so  to  issue  it  was  a  clerical  error  on  the  part  of  the 
Commissioner,  which  ought  to  be  corrected  without  fur- 
ther reissue  or  expense  to  the  applicant. 

"The  act  of  March  3,  1837,  §  6,  provides  'That  any 
patent  hereafter  to  be  issued  may  be  made  and  issued  to 
the  assignee  or  assignees  of  the  inventor  or  discoverer, 
the  assignment  thereof  being  first  entered  of  record,  and 
the  application  therefor  being  duly  made,  and  the  speci- 
fication duly  sworn  to  by  the  inventor.' 

"  The  language  is,  '  may  be  made  and  issued,'  not 
'shall  be,'  and  it  has  been  the  constant  practice  of  the 


REISSUES.  565 

office  to  issue  patents  to  the  inventor  unless .  otherwise 
specially  requested  by  him.  The  mere  facts  of  assign- 
ment and  record  do  not  impose  upon  the  Commissioner 
the  duty  of  issuing  the  letters  patent  to  the  assignee  with- 
out further  request,  and  the  omission  to  do  so  is  not  there- 
fore a  mistake  on  his  part.  The  rights  of  the  assignee 
in  the  patent  are  precisely  the  same,  whether  the  patent 
be  issued  to  him  or  to  the  inventor,  and  whether  it  issue 
to  the  one  or  the  other  is  a  matter  of  form  rather  than 
of  substance. 

"In  the  case  of  Dental  Vulcanite  Company  v.  Wetherbee, 
(3  Fish.,  87,)  where  a  similar  correction  is  called  the  cor- 
rection of  a  clerical  error,  the  decision  states  that  the 
error  was  corrected  by  reissue.  The  office  records  show 
that  the  patent  was  reissued  to  Cummings,  January  10, 
1865,  after  his  sale  to  the  Dental  Vulcanite  Company. 
On  January  19, 1865,  he  addressed  the  office,  stating  the 
fact  that  all  his  rights  were  assigned  to  the  Dental  Vul- 
canite Company,  and  that  the  assignment  was  on  record, 
and  asking  that  the  reissued  patent  'be  so  amended  as 
to  recite  the  fact  that  the  said  reissue  is  granted  to  the 
said  Dental  Vulcanite  Company.'  This  was  refused,  and 
on  February  27,  1865,  the  reissue  was  surrendered,  a  fee 
of  thirty  dollars  paid,  and  a  new  patent  was  reissued  to 
the  assignees,  dated  March  21,  1865. 

"It  is  true  that  the  learned  judge  speaks  of  this  as  the 
correction  of  a  clerical  error;  but  he  adds,  in  effect,  that 
it  was  an  irregularity  arising  from  an  imperfection  in  the 
application.  If  the  Commissioner  was  bound  to  issue  to 
the  assignee  in  all  cases  without  request,  upon  the  faith 
of  the  notice  furnished  by  the  record,  the  character  of  the 
application  would  have  been  immaterial. 
48 


566  PROCEDURE  IN  THE  PATENT  OFFICE. 

"It  must  not  be  forgotten  that  applicants  may  make 
mistakes  of  a  purely  clerical  character  as  well  as  the 
office.  "When  the  mistakes  are  those  of  the  office,  they 
will  be  corrected  without  expense  to  the  applicant;  but 
when  he  makes  them,  they  can  be  cured  only  by  a  sur- 
render of  his  old  patent  for  correction,  payment  of  the 
fee,  and  the  issue  of  an  amended  patent. 

"  The  error  in  the  present  case  is  one  of  the  latter  class, 
and  can  only  be  corrected  by  surrender  and  reissue." 
(Commissioners'  Decisions,  February  10,  1870.) 

In  the  case  of  Andrew  ex  parte,  (motion,}  Acting  Com- 
missioner Duncan  says:  "  This  patent  is  for  an  improve- 
ment in  door-knobs,  and  relates  to  a  mode  of  adjusting 
the  distance  between  the  two  knobs  according  to  the 
thickness  of  the  door  upon  which  they  are  used,  the  ad- 
justing mechanism  consisting  of  a  series  of  ratchet  teeth 
upon  the  spindle,  operating  In  connection  with  a  spring 
detent  located  within  the  chamber  or  socket  of  the  knob 
into  which  the  spindle  is  to  be  inserted,  the  spring  being 
made  somewhat  wider  than  the  spindle,  so  that  it  can  at 
any  time  be  released  by  a  proper  instrument  inserted  by 
the  side  of  the  spindle  through  an  orifice  provided  for 
that  purpose.  The  claim  is  for  'the  flat  spring  C. attached 
to  the  knob  spindle,  and  adapted  to  engage  with  the  ratchet 
teeth  a,  a,'  &c. 

"Unquestionably  the  word  'spindle'  is  erroneously 
used  in  the  claim,  and  the  patentee,  by  attorney,  now 
moves  that  the  specification  be  reprinted  for  the  purpose 
of  correcting  the  claim  by  erasing  the  interpolated  word 
therefrom,  on  the  ground  that  its  insertion  was  a  purelj 
'clerical  error.' 

"It  is  found  upon  examination  of  the  papers  that  the 


REISSUES.  567* 

claim  as  it  stands  in  the  patent  is  in  the  precise  language 
in  which  it  was  drawn  by  Andrew's  attorney  when  his 
application  was  pending  before  the  office.  The  error 
originated  with  applicant's  duly  authorized  agent,  and  if 
in  consequence  the  present  owner  of  the  patent  is  to  any 
extent  debarred  his  right  to  the  full  enjoyment  of  his 
invention,  the  appropriate  remedy  is  as  provided  in  § 
53  of  the  patent  act  of  July  8,  1870.  It  is  an  instance 
of  a  'defective  specification,'  in  which  the  error  has 
arisen  by  '  inadvertence,  accident,  or  mistake,'  the  word 
specification  being  employed  in  this  connection  in  its 
generic  sense,  to  include  claim  as  well  as  mere  descrip- 
tion. 

"As  this  case  clearly  comes  within  the  category  of 
those  for  which  the  remedy  by  reissue  has  been  provided, 
it  would  be  unwise,  to  say  the  least,  if  not,  in  fact,  an  act 
of  questionable  authority,  to  attempt  to  correct  the  error 
in  the  manner  proposed. 

"Of  reissue  patents,  going  out  as  they  do  with  a  new 
date  and  a  distinctive  number,  the  public  are  bound  to 
take  notice,  the  same  as  they  are  of  original  patents;  but 
there  is  no  official  mode  yet  adopted  of  advertising  to  the 
world  the  fact  and  the  character  of  changes  made  in  the 
specification  of  a  patent  by  the  process  sought  to  be  ap- 
plied in  the  present  instance. 

"  The  proposition  is  to  issue  a  new  patent,  which  is  to 
retain  the  same  date  and  number  as  the  old  one;  and  the 
public,  not  advised  of  any  alteration  in  the  original  instru- 
ment, as  they  would  be  if  a  reissue  had  taken  place,  are 
to  continue  to  use  whatever  certified  or  otherwise  official 
copies  have  passed  into  circulation,  in  the  full,  though 
erroneous,  belief  that  these  copies  are,  in  all  particulars, 


'568 


PROCEDURE  IN  THE  PATENT  OFFICE. 


faithful  transcripts  of  a  public  record  which  has,  in  point 
of  fact,  been  changed,  though  without  notice  to  the  world. 

"I  am  clearly  of  the  opinion,  therefore,  for  reasons  of 
public  policy  as  well  as  because  of  the  express  provision 
of  the  statute  applicable  to  this  case,  that  the  patentee, 
if  he  finds  himself  hindered  in  his  rights  to  any  extent  by 
reason  of  the  error  in  the  specification,  should  cure  the 
defect  by  a  reissue.  The  motion  is  denied."  (Commis- 
sioners' Decisions,  July  28,  1870.) 

(See  generally,  as  to  the  correction  and  effect  of  mis- 
takes, Kneass  v.  Schuylkill  Bank,  4  Wash.,  14;  Grant  v. 
Raymond,  6  Pet.,  241,  242;  Woodworth  v.  Hall,  1  Wood.  £ 
Minot,  260,  398,  399;  Kittle  v.Merriam,  2  Curt.,  478.) 

371.  DIVISIONS  OF  A  REISSUE,  (vide  supra,  p.  255,  etseq.] 
The  Commissioner  may,  in  his  discretion,  cause  several 
patents  to  be  issued  for  distinct  and  separate  parts  of  the 
thing  patented,  upon  demand  of  the  applicant  and  upon 
payment  of  the  required  fee  for  a  reissue  for  each  of  such 
reissued  letters  patent.  (Act  of  July  8, 1870,  §  53.) 

A  patentee,  in  reissuing,  may  at  his  option  have  a 
separate  patent  for  each  distinct  and  separate  part  of  the 
invention  comprehended  in  his  original  patent,  by  paying 
the  required  fee  in  each  case  and  complying  with  the 
other  requirements  of  the  law,  as  in  original  applications. 
Each  division  of  a  reissue  constitutes  the  subject  of  a 
separate  specification,  descriptive  of  the  part  or  parts  of 
the  invention  claimed  in  such  division ;  and  the  drawing 
may  represent  only  such  part  or  parts.  All  the  divisions 
of  a  reissue  will  issue  simultaneously.  If  there  be  con- 
troversy as  to  one,  the  other  will  be  withheld  from  issue 
until  the  controversy  is  ended.  (Patent  Office  Rules,  July, 
1870.) 


EEISSUES.  569 

If  an  original  patent  include  two  inventions,  and  its 
validity  on  that  account  is  doubtful,  a  separate  reissue  is 
just  and  proper,  (G-oodyear  v.  Day,  MS.  N.  J.,  1852;) 
and  the  patentee  has  a  right  to  have  a  reissue  of  patents 
for  each  distinct  part  in  order  to  effectually  cure  the  de- 
fect. (Ball  exparte  MS.  Appeal  Cases,  D.  C.,  1860.) 

In  the  matter  of  the  application  of  "William  Lowe,  for 
the  reissue  of  letters  patent  for  an  improved  method  of 
increasing  combustion  in  steam  boilers,  granted  June 
4,  1867,  the  Commissioner  says: 

"Applicant  devised  an  apparatus  whereby  the  products 
of  combustion  arising  from  a  furnace  are  conducted  by 
tubes,  which  enter  a  combustion  chamber  at  nearly  oppo- 
site points.  The  currents  are  thus  disturbed  and  caused 
to  commingle,  and  while  in  this  condition  air  or  oxygen 
is  introduced  to  them.  It  is  claimed  that  combustion  is 
much  facilitated  by  this  arrangement. 

"For  this  apparatus  he  has  applied  and  been  allowed 
letters  patent.  He  now  seeks,  in  another  division  of  his 
application,  to  obtain  a  second  patent, with  the  following 
claim :  '  The  process  above  described  of  oxydizing  the 
products  of  combustion,  namely,  by  bringing  air  in  con- 
tact with  these  gases  while  being  mixed  and  in  a  state  of 
disturbance.' 

"The  first  answer  to  this  claim  is,  that  it  cannot  form 
the  subject  of  a  separate  patent.  It  is  not  for  a  distinct 
and  separate  part  of  the  thing  patented  in  the  original. 
The  furthest  point  to  which  the  division  of  inventions 
has  been  pushed  has  been  to  grant  one  patent  for  a  proc- 
ess and  another  for  the  product  of  that  process.  Such 
patents  have,  with  some  hesitation, been  sustained,  (Good- 
ywr  v.  Honsinger,  3  Fish.,  160;  Goodyear  v.  Wait,  3  Fish., 
48* 


570  PROCEDURE  IN  THE  PATENT  OFFICE. 

244 ;  Groodyearv.  Providence  Rubber  Company,  2  Fish.,  510 ;) 
but  upon  the  express  ground  that  this  was  a  matter  con- 
fided by  law  to  the  discretion  of  the  Commissioner.  But 
I  have  never  known  one  patent  to  issue  for  a  machine 
and  another  for  the  law  or  principle  by  which  it  operates. 
The  mechanism  of  applicant  is  of  no  possible  value  except 
to  carry  out  this  process.  Aside  from  this,  it  possesses 
no  patentable  utility.  The  process  is  of  no  avail,  unless 
carried  on  through  the  medium  of  instrumentality.  (Mor- 
ton v.  New  York  Eye  Infirmary,  2  Fish.,  324.)  It  would  be 
idle  to  sell  the  patent  for  the  mechanism,  and  withhold 
that  which  covers  its  legitimate  and  only  mode  of  oper- 
ation. 

Separate  patents  for  processes  and  products  have  been 
justified  upon  the  ground  that  the  product  might  be 
imported,  and  a  patent  for  the  process  would  give  no 
protection ;  but  the  machine  and  its  mode  of  operation 
cannot  be  separated. 

"Upon  this  ground  alone  the  present  application  for  a 
division  cannot  be  sustained."  ( Commissioners'  Decisions, 
April  30,  1870.) 

372.  ACTION  OF  THE  COMMISSIONER. — In  the  case  of 
Allen  v.  Blunt,  3  Story,  744,  Story,  J.,  says:  "Whether  the 
invention  claimed  in  the  original  patent  and  that  claimed 
in  the  new  amended  patent  is  substantially  the  same,  is 
and  must  be  in  many  cases  a  matter  of  great  nicety  and 
difficulty  to  decide.  It  may  involve  considerations  of 
fact  as  well  as  of  law.  Who  is  to  decide  the  question  ? 
The  true  answer  is,  the  Commissioner  of  Patents,  for 
the  law  intrusts  him  with  the  authority,  not  only  to  ac- 
cept the  surrender,  but  to  grant  the  new  amended  pat- 
ent. He  is  bound,  therefore,  by  the  very  nature  of  his 


REISSUES.  571 

duties,  to  inquire  into  and  ascertain  whether  the  specifi- 
cation is  definite  or  insufficient,  in  point  of  law  or  fact, 
and  whether  the  inventor  has  claimed  more  than  he  has 
invented,  and  in  each  case  whether  the  error  has  arisen 
from  inadvertency,  accident,  or  mistake,  or  with  a  fraud- 
ulent or  deceptive  intention.  No  one  can  well  doubt 
that,  in  the  first  instance,  therefore,  he  is  bound  to  de- 
cide the  whole  law  and  facts  arising  under  the  applica- 
tion for  the  new  patent.  Prima  facie,  therefore,  it  must 
be  presumed  that  the  new  amended  patent  has  been 
properly  and  rightfully  granted  by  him.  I  very  much 
doubt  whether  his  decision  is  or  can  be  re-examinable  in 
any  other  place,  or  in  any  other  tribunal,  at  least  unless 
his  decision  is  impeached  on  account  of  gross  fraud  or 
connivance  between  him  and  the  patentee;  or  unless  his 
excess  of  authority  is  manifest  upon  the  very  face  of  the 
papers;  as,  for  example,  if  the  original  patent  were  for  a 
chemical  combination,  and  the  new  amended  patent  were 
for  a  machine.  In  other  cases,  it  seems  to  me,  that  the  law, 
having  intrusted  him  with  authority  to  ascertain  the  facts, 
and  to  grant  the  patent,  his  decision,  bonafide  made,  is  con- 
clusive. It  is  like  many  other  cases,  where  the  law  has 
referred  the  decision  of  a  matter  to  the  sound  discretion 
of  a  public  officer,  whose  adjudication  becomes  conclu- 
sive. Suppose  the  Secretary  of  the  Treasury  should 
remit  a  penalty  or  forfeiture  incurred  by  a  breach  of  the 
laws  of  the  United  States,  would  his  decision  be  re-ex- 
aminable in  any  court  of  law  upon  a  suit  for  the  penalty 
or  forfeiture?  The^President  of  the  United  States  is, 
by  law,  invested  with  authority  to  call  forth  the  militia 
to  suppress  insurrections,  to  repel  invasions,  and  to  exe- 
cute the  laws  of  the  Union ;  and  it  has  been  held  by  tho 


572        PROCEDURE  IN  THE  PATENT  OFFICE. 

Supreme  Court  of  the  United  States  that  his  decision  as 
to  the  occurrence  of  the  exigency  is  conclusive.  In  short, 
it  may  be  laid  down  as  a  general  rule,  that  where  a  par- 
ticular authority  is  confided  to  a  public  officer,  to  be  ex- 
ercised by  him  in  his  discretion,  upon  an  examination  of 
facts,  of  which  he  is  made  the  appropriate  judge,  his 
decision  upon  these  facts  is,  in  the  absence  of  any  con- 
trolling provisions,  absolutely  conclusive  as  to  the  ex- 
istence of  those  facts.  My  opinion,  therefore,  is,  that 
the  grant  of  the  present  amended  patent  by  the  Com- 
missioner of  Patents  is  conclusive  as  to  the  existence 
of  all  the  facts  which  were  by  law  necessary  to  entitle 
him  to  issue  it;  at  least,  unless  it  was  apparent  on  the 
very  face  of  the  patent  itself,  without  any  auxiliary  evi- 
dence, that  he  was  guilty  of  a  clear  excess  of  authority, 
or  that  the  patent  was  procured  by  a  fraud  between  him 
and  the  patentee,  which  is  not  patented  in  the  present 
case."  The  Commissioner  is  presumed,  in  issuing  new 
letters  patent,  to  have  discharged  his  duty  faithfully  and 
correctly,  (Allen  v.  Blunt,  2  Wood.  £  Minot,  138,)  and  his 
action  is  not  re-examinable  elsewhere,  unless  a  clear  case 
of  fraud  is  made  out,  (Day  v.  Goodyear,  MS.  N. J.,  1850, 
Batten  v.  Taggart,  17  How.,  84,)  or  unless  it  is  apparent 
from  the  face  of  the  patent  that  he  has  exceeded  his 
authority,  or  unless  there  is  a  clear  repugnancy  between 
the  old  and  new  patent,  or  unless  the  new  one  has  been 
obtained  by  collusion  between  the  Commissioner  and 
the  patentee,  (Potter  v.  Holland,  1  Fish.,  327.)  The  only 
mode  of  impeaching  the  reissue  dpon  the  ground  that 
it  is  for  a  different  invention  from  the  original,  where 
there  is  no  allegation  or  proof  of  fraud,  is  by  showing 
upon  the  face  of  the  instrument  that  one  is  so  different 


REISSUES.  573 

from  and  repugnant  to  the  other  that  the  court  can  see 
that  the  invention  described  in  the  original  is  another 
and  different  one  from  that  set  forth  in  the  reissue. 
(Middletown  Tool  Company  v.  Judd,  3  Fish.,  141;  Hussey 
v.  Bradley,  2  Fish.,  362.) 

The  Commissioner  has  power  to  decide,  and  in  every 
acceptance  of  surrender  does  decide,  that  the  original 
patent  was  inoperative  and  invalid  by  reason  of  a  defect- 
ive specification,  or  by  claiming  too  much,  and  that  the 
error  arose  by  inadvertency,  accident,  or  mistake,  and 
without  any  fraudulent  or  deceptive  intention.  (Blake 
v.  Stafford,  3  Fish.,  294.) 

He  is  authorized  to  grant  a  new  patent  for  the  same 
invention,  and  for  no  other;  and  when  he  grants  the  new 
one  the  presumption  is  that  it  embraces  the  same  inven- 
tion as  the  original,  (ib.;  House  v.  Young,  3  Fish.,  335;) 
but  it  is  in  accordance  with  the  late  decisions  that  the 
decision  of  the  Commissioner  is  not  conclusive  upon  the 
substantial  identity  of  the  inventions  claimed  in  the 
original  and  reissued  patents,  (Goodyear  v.  Berry,  3  Fish., 
699;)  and  in  the  case  of  Seymour  v.  Osborne,  1869,  (3  Fish., 
555,)  Mr.  Justice  Nelson  said:  "It  must  be  conceded  that 
the  action  of  the  Commissioner,  in  receiving  a  surrender 
and  granting  a  reissue,  is  very  strong  prima  facie  evidence 
that  the  case  was  one  in  which  a  reissue  was  proper  and 
lawful,  but  the  decision  of  the  Commissioner  upon  this 
point  is  not  conclusive;  and  the  more  recent  decisions 
very  clearly  indicate  the  opinion  that  many  reissues  have 
been  improperly  granted,  and  that  the  abuses  which  have 
grown  out  of  fraudulent  or  improper  reissues  have  been 
such  as  to  require  a  more  rigid  scrutiny  in  regard  to  the 
propriety  and  legality  of  the  surrender  and  reissue  of  a 


574  PROCEDURE  IN  THE  PATENT  OFFICE. 

patent."  (Burr  v.  Duryee,  1  Wall.,  531,  579;  Case  v. 
Brown,  2  Wall,  320;  Sickles  v.  Evans,  2  JM.,  417;  Car- 
hart  v.  Austen,  2  .FwA.,  543. 

373.  REISSUE  MUST  BE  FOR  THE  SAME  INVENTION  AS  THE 
ORIGINAL  PATENT. — The  general  rule  is,  that  whatever  is 
really  embraced  in  the  original  invention ,  and  so  described 
or  shown  that  it  might  have  been  embraced  in  the  orig- 
inal patent,  may  be  the  subject  of  a  reissue,  (Patent  Office 
Rules,  July,  1870.)  No  new  matter  shall  be  introduced  into 
the  specification,  nor,  in  case  of  a  machine  patent,  shall 
the  model  or  drawings  be  amended,  except  each  by  the 
other;  but,  when  there  is  neither  model  nor  drawing, 
amendments  may  be  made  upon  proof  satisfactory  to  the 
Commissioner  that  such  new  matter  or  amendment  was 
a  part  of  the  original  invention,  and  was  omitted  from 
the  specification  by  inadvertence,  accident,  or  mistake, 
as  aforesaid.  (Act  of  July  8,  1870,  §  53.) 

A  reissue  can  be  obtained  only  for  that  which  was  the 
original  and  true  invention  of  the  patentee,  but  which  he 
failed  to  claim  or  describe  in  the  original  claim  and  speci- 
fication, (Hoffheim  v.  Brandt,  3  Fish.,  218.)  A  new  and 
different  invention  cannot  be  claimed.  (Batten  v.  Tag- 
gert,  17  How.,  83.)  The  intent  of  the  legislature  was  to 
enable  patentees  to  cure  honest  mistakes  and  to  get,  sub- 
stantially, protection  for  the  same  invention  they  had  made 
and  intended  to  be  patented  when  the  original  patent 
was  granted.  (Dyson  ex  parte,  MS.  Appeal  Cases,  D.  C., 
1860.)  Only  what  was  invented  before  or  at  the  time,  of 
the  grant  of  the  original  patent,  and  was  omitted  to  be  put 
in  the  original  patent  by  accident  or  mistake,  and  without 
any  fraudulent  or  deceptive  intention,  can  be  embraced 
in  a  reissue,  ( Wilson  v.  Singer,  MS.  Appeal  Cases,  D.  C., 


REISSUES.  575 

I860,)  and  the  invention  must  be  shown  in  some  part  of 
the  original  patent,  specifications,  drawings,  and  model. 
(Hoffheim  v.  Brandt,  3  Fish.,  318.)  The  Commissioner 
is  authorized  to  grant  a  new  patent  for  the  same  inven- 
tion, and  none  other,  (ib.f)  and  where  an  invention  was 
described  in  reissues  of  1863,  but  not  made  in  1854,  when 
the  original  patent  was  granted,  the  reissues  were  held 
to  be  void.  (American  Wood  Paper  Company  v.  Hift,  3 
.FM.,316.) 

But  differences  of  description  or  specification  between 
the  original  and  reissue  are  consistent  with  the  identity 
of  the  thing  patented.  To  correct  a  description  or  claim, 
or  both,  is  one  object  of  allowing  a  surrender,  (Cromp- 
ton  v.  Belknap  Mills,  3  Fish.,  536;)  arid  a  patentee  can  le- 
gally take  out  a  reissued  patent  for  more  than  is  described 
in  the  surrendered  patent,  if  it  does  not  exceed  the  actual 
invention  when  the  first  patent  was  taken  out.  (Tatham  v. 
Lowber,  Mirror  of  Patent  Office,  146;  N.  Y.,  1847.)  It  may 
be  that  the  ground  covered  by  the  reissue  is  enlarged  be- 
yond that  embraced  in  the  original,  but  the  true  question 
is,  whether  it  is  broader  than  the  original  invention. 
(Blake  v.  Stafford,  3  Fish.,  294.)  The  legal  question  is 
not  what  the  patentee  intended  to  patent,  but  what  he 
had  in  fact  invented.  (American  Wood  Company  v.  Hiftj  3 
Fish.,  316.)  The  describing  part  of  a  machine  in  the 
first  patent,  but  without  making  any  claim  to  it,  does  not 
deprive  the  inventor  of  a  right  to  a  patent  for  such  part. 
(Batten  v.  Taggart,  17  How.,  83.)  If  a  certain  feature  of 
the  original  invention  was  the  invention  of  the  patentee, 
which  he  omitted  to  claim,  he  has  a  right,  upon  the  sur- 
render of  the  patent,  to  incorporate  that  element  in  a  re- 
issue. (Swift  v.  Whissen,  3  Fish.,  343.)  If  the  drawings 


576  PROCEDURE  IN  THE  PATENT  OFFICE. 

show  an  element  of  the  invention  which  the  patentee  has 
not  included  specifically  in  his  claim,  it  is  evidence  never- 
theless that  it  was  a  part  of  his  invention,  arid  he  has  a 
right  to  incorporate  that  element  in  a  reissued  patent. 
(Ib.)  The  patentee  is  entitled  to  every  advantage  within 
the  full  scope  of  his  invention,  and  a  new  function  de- 
veloped by  the  combination  of  different  elements  of  the 
invention  will  not  be  considered  new  matter.  (Bull  ex 
parte,  MS.  Appeal  Cases,  D.  C.,  1860.) 

In  the  case  of  an  original  application  the  applicant  has 
no  right,  by  law,  to  an  amendment  of  his  specification,  ex- 
cept to  conform  his  specification  to  the  alterations  sug- 
gested by  the  Commissioner,  (vide  supra,  p.  333;)  but 
an  amendment  in  a  case  of  a  reissue  is  different:  it  is  not 
of  grace,  but  of  right.  (Dyson  ex  parte,  MS.  Appeal  Cases, 
D.  C.,  1860.) 

In  a  reissued  patent  the  patentee  need  not  claim  all 
that  was  claimed  in  the  original  patent.  He  may  retain 
whatever  he  deems  proper.  ( Crompton  v.  Bel/map,  3  Fish., 
536.)  He  is  not  bound  to  describe  or  claim  all  that  he 
described  or  claimed  in  his  original  patent,  but  he  cannot 
describe  any  new  or  other  improvement.  (Goodyear  v. 
Day,  MS.  N.  J.,  1852.) 

Although,  looking  only  to  the  claims  of  a  reissue,  it 
would  be  difficult  to  find  any  evidence  that  it  was  for 
the  same  invention  as  that  specifically  claimed  in  the 
original,  and,  indeed,  a  comparison  of  the  language  of 
these  claims  would  seem,  in  the  absence  of  all  other 
proof,  to  repel  such  an  allegation,  yet  this  is  not  even 
conclusive.  (Hussey  v.  Bradley,  2  Fish.,  326.)  It  is  well 
settled,  that  in  deciding  upon  applications  for  reissue, 
and  the  question  whether  the  invention  claimed  on  the 


REISSUES.  577 

reissue  is  the  same  invention  intended  to  be  patented  on 
the  original  application,  the  Commissioner  of  Patents  is 
not  confined  to  the  claims,  nor  even  to  the  examination 
of  the  evidence  furnished  hy  the  specification,  models, 
and  drawings  accompanying  the  original  application, 
and  that  any  legal  proof  to  show  it  to  be  the  same  in- 
vention should  be  received.  (Ib.) 

Where  the  original  and  reissued  specifications  are 
consistent,  or  where  there  is  no  positive  conflict  or  abso- 
lute inconsistency,  the  rule  that,  in  the  absence  of  fraud, 
the  reissued  patent  is  evidence  of  the  identity  of  the 
inventions,  may  be  applied;  but,  where  it  appears  on 
the  face  of  the  respective  specifications,  as  matter  of 
law,  that  the  specification  and  claim  of  the  reissued  pat- 
ent are  for  a  different  invention  from  that  secured  in  the 
original,  the  rule  cannot  be  sustained.  (Sickler  v.  Evans, 
2  Fish.,  417.)  And  wherever  it  appears,  upon  a  com- 
parison of  the  two  specifications  and  claims,  as  a  matter 
of  law  arising  on  their  construction,  that  the  reissued 
patent  is  for  a  different  invention  from  that  secured  ir 
the  original  patent,  then  the  original  patent  is  void  anc. 
of  no  effect.  (Ib.) 

The  examiner  has  no  authority  for  allowing  new 
matter  to  be  introduced  in  a  reissue  which  was  not  shown 
in  the  original  application,  (W.  O.  Dodge,  Commissioners' 
Decisions,  1869,  p.  27.)  Where  the  original  application 
claims  equivalents  in  general  terms,  such  as  are  not 
shown  in  it  cannot  be  enumerated  specifically  on.  a  re- 
issue, (ib.)  Nothing  but  what  was  shown  in  the  original 
specification,  drawings,  or  model  can  be  introduced  into 
a  reissue,  (ib.)  Nothing  can  be  claimed  in  a  reissue 
which  was  not  shown  in  the  original  application,  although 
49 


578  PROCEDUEE  IN  THE  PATENT  OFFICE. 

proof  is  offered  that  it  is  a  necessary  part  of  what  was 
shown,  (ib.)  A  patent  that  mentions  in  general  terms 
that  the  invention  may  be  used  for  other  purposes 
not  described,  cannot  therefore  be  reissued  with  a  speci- 
fication of  any  such  purpose,  (Woodward  v.  Heist.,  ib.,  34.) 
The  model  or  drawings  may  be  amended  by  each  other 
upon  a  reissue,  but  neither  can  be  by  the  specification, 
(Elizabeth  Hawkes,  ib.,  37.)  Devices  not  shown  nor  de- 
scribed in  the  original  application,  although  alleged  to  be 
equivalents  of  what  were,  should  not  be  introduced  upon 
a  reissue,  (Willis  Humiston,  ib.,  47.)  Although  equiva- 
lents are  claimed  in  general  terms  in  an  application,  none 
but  such  as  are  shown  in  it  should  be  specified  in  a  re- 
issue of  the  patent,  (J.  A.  Krake,  ib.,  100.)  The  con- 
struction of  a  machine  which  was  evidently  contemplated 
in  the  original  specification  may  be  described  in  explicit 
terms  upon  a  reissue,  (George  W.  Brown,  ib.,  10.)  The 
specification  may  be  amended  upon  a  reissue  by  the 
model  originally  filed,  and  the  model  or  drawings  may  be 
amended  by  each  other,  but  not  by  the  specification,  ( W. 
C.  Dodge,  ib.,  27, 

A  reissue  is  prohibited,  both  by  law  and  the  rules  of 
the  Patent  Office,  for  any  thing  save  the  same  invention 
which  was  described  or  shown  in  the  original  patent,  (Dietz 
exparte,  MS.  Appeal  Cases,  D.  C.,  1860.)  But  the  legis- 
lature has  not  said  by  what  proof  the  applicant  shall  show 
that  his  invention,  claimed  on  reissue,  is  the  same  intend- 
ed to  be  patented  on  his  original  application,  and  he  is 
not  limited  by  the  statute  to  prove  it  by  the  original  spec- 
ifications, models,  or  drawing.  Any  legal  proof,  whether 
found  in  the  record  or  aliunde,  ought  to  be  received  and 
weighed.  (Dyson  exparte,  MS.  Appeal  Cases,  D.  C.,  1860.) 


REISSUES.  579 

The  law  does  not  point  to  the  model  and  drawings  as  the 
sole  means  of  proof,  and  no  authority  is  given  to  the  Patent 
Office  to  limit  the  range  of  the  applicant's  proof,  if  it  is 
such  as,  upon  the  law  of  evidence,  is  held  sufficient  to  prove 
facts  before  other  legal  tribunals.  (Ib.)  The  rules  of  the 
Patent  Office  as  to  reissues  are  general  in  their  terms,  and 
properly  so.  They  do  not  profess  to  be  without  excep- 
tion ;  they  state  what  may  be  the  subject  of  reissue,  not 
what  shall  be,  and  do  not  prescribe  that  the  mode  men- 
tioned therein  shall  be  the  only  mode  of  proving  identity 
of  invention.  (Ib.) 

If  there  is  a  defect  in  the  original  patent  and  its  specifi- 
cation, the  applicant  may  resort  to  the  next  highest  evi- 
dence, the  model,  to  show  the  defects  complained  of,  (Bull 
ex  parte,  MS.  Appeal  Cases,  I860,)  and  the  model  may  be 
referred  to  as  evidence  of  the  extent  of  the  invention. 
The  applicant  is  not  necessarily  confined  to  the  original 
record,  i.  e.,  the  patent  and  specification  of  his  first  pat- 
ent. (Ib.) 

It  belongs  to  the  province  of  the  jury  to  decide  whether 
the  reissued  patent  is  for  the  same  invention  as  the  orig- 
inal one.  ( Carver  v.  Braintree  Company,  2  Story,  441, 442; 
Batten  v.  Taggart,  17  How.,  83 ;  Heilner  v.  Batten,  27  Penn., 
521 ;  Stimson  v.  Westchester  Railroad,  4  How.,  404.)  But 
the  cases  of  Batten  v.  Taggart  and  Carver  v.  Braintree  Com- 
pany do  not  sustain  the  position  that  this  question  is  one 
of  fact,  which  only  the  jury  can  determine.  The  power  of 
a  court  of  equity  to  pass  upon  such  fact  is  not  touched  by 
them.  (Poppenhausen  v.  Folke,  2  Fish.,  181.) 

374.  SPECIFICATION  AND  CLAIM  SUBJECT  TO  REVISION. — 
In  all  cases  of  applications  for  reissues  the  original  claim, 
if  reproduced  in  the  amended  specification,  is  subject  to 


580  PROCEDURE  IN  THE  PATENT  OiTICE. 

re-examination,  and  may  be  revised  and  restricted  in  the 
same  manner  as  in  original  applications ;  but  if  any  re- 
issue, be  refused,  the  original  patent  will,  upon  request, 
be  returned  to  the  applicant.  (Act  of  July  8, 1870,  §  53; 
Patent  Office  Rules,  July,  1870.) 

375.  SURRENDER  DOES  NOT  TAKE  EFFECT  UNTIL  THE  RE- 
ISSUE is  GRANTED.  — No  surrender  is  made  until  the  reis- 
sue is  granted.  Until  the  reissue  is  actually  issued  from 
the  office  the  original  patent  remains  uncanceled.  It  ia 
usually  deposited  in  the  office  with  the  application,  as  a 
guaranty  that  the  application  is  made  in  good  faith,  and 
that,  if  the  office  is  willing  to  grant  the  new  patent,  the  • 
old  one  shall  be  forthcoming.  Besides  this,  as  the  de- 
mand for  a  reissue  is  declared  to  be  based  upon  the  inva- 
lidity of  the  original,  an  invalidity  which  the  applicant 
is  estopped  to  deny,  (Mqffit  v.  Gaar,  1  Black,  273,)  the 
original  patent  is  useless,  and  may  well  be  committed  to 
the  custody  of  the  office.  Nevertheless,  the  uniform 
practice  has  been  to  return  the  original  patent  if  a  reissue 
be  finally  refused.  There  can  be  no  doubt  of  the  right 
of  an  applicant  for  a  reissue  to  abandon  his  application 
at  any  time,  and  to  demand  and  receive  his  original  pat- 
ent. Some  have  supposed  the  eighth  section  of  the  act 
of  1837  to  be  in  conflict  with  this  practice ;  but  that  sec- 
tion provides,  not  for  an  examination  of  the  claims  of 
the  original  patent,  but  for  the  examination  of  the  new 
or  corrected  claims,  in  the  same  manner  as  upon  an 
original  application. 

It  is  obvious  that  if  the  surrender  does  not  take  effect, 
and  the  patent  remains  uncanceled  until  the  issue  of  the 
amended  patent,  the  continuity  is  not  broken.  ( White- 
ley  ex  parte,  Commissioners'  Decisions,  1869,  p.  72.) 


REISSUES.  581 

If  a  reissue  is  not  valid,  the  surrender  which  led  to  it 
will  also  be  invalid,  and  the  old  letters  patent  will  be 
considered  in  full  force.  (Woodworth  v.  Edwards,  3 
Wood.  £  Mnot,  137.) 

376.  RIGHTS  CONFERRED  BY  REISSUE. — The  new  patent 
is  issued  to  the  patentee  for  the  unexpired  part  of  the 
term  of  the  original  patent,  the  surrender  of  which  takes 
effect  upon  the  issue  of  the  amended  patent,  and  the  pat- 
ent so  reissued,  together  with  the  corrected  specification, 
has  the  effect  and  operation  in  law,  on  the  trial  of  all  ac- 
tions thereafter  arising,  as  though  the  same  had  been 
originally  filed  in  such  corrected  form.  (See  Act  of  July 
8,  1870,  §  53.)  The  reissued  patent  with  corrected  speci- 
fications has  relation  back  to  the  emanation  of  the  first 
patent  as  fully,  for  every  legal  purpose,  as  to  causes  sub- 
sequently accruing,  as  if  the  second  patent  had  been 
issued  at  the  date  of  the  first  one,  (Stanley  v.  Whipple,  2 
McLean,^!;  Smith  v.  Pearce,2McLean,VlQ,}  even  though 
the  original  patent  was  invalid,  (Bloomer  v.  Stolley,  5  Mc- 
Lean, 166,)  and  legalizes  the  rights  of  the  patentee  from 
the  date  of  the  first  patent,  (Stanley  v.  Whipple,  2  Mc- 
Lean, 37; )  but  it  can  cover  only  the  same  term  that  the 
original  patent  did.  ( Woodworth  v.  Hall,  1  Wood,  g  Mi* 
not.,  257.) 

It  operates,  except  to  suits  for  violations  commenced 
before  the  amendment,  from  the  commencement  of  the 
original  term.  (Ib.}  An  action  cannot  be  maintained  for 
damages  for  an  infringement  occurring  under  the  old 
patent  before  the  surrender,  (Mo flit  v.  Gaar,  1  Fish.,  610;) 
but  it  is  no  defense  to  an  action  upon  the  reissued  pat- 
ent that  the  defendant's  machine  was  made  and  put  up 
during  the  original  patent,  under  which  he  was  not  liable 

49* 


582  PROCEDURE  IN  THE  PATENT  OFFICE. 

to  an  action  for  infringement,  (Coe  v.  Rice,\  Fish.,  198,) 
nor  will  proof  of  the  use  of  the  thing  patented  daring 
the  interval  between  the  original  and  reissued  patents  de- 
feat the  action,  (Batten  v.  Taggart,  17  How.,  84.)  No  prior 
use  of  a  defective  patent  can  authorize  the  use  of  an  in- 
vention after  the  emanation  of  a  renewed  patent,  however 
long  such  use  may  have  heen  after  the  date  of  the  defect- 
ive and  surrendered  patent.  (Stimson  v.  Westchester  Hail- 
road,  4 How.,  402.) 

There  is  a  well-recognized  difference  between  an  ex- 
tended and  a  reissued  patent.  The  former  grants  a  wholly 
new  term,  the  latter  only  legalizes  the  right  during  the 
continuance  of  the  original  term.  (McBurney  v.  Good- 
year, 11  Cush.,  571.) 

A  contract  concerning  a  patent  made  before  its  sur- 
render applies  to  the  reissued  patent.  (/#.) 

377.  PETITION  FOR  A  REISSUE,  (BY  THE  INVENTOR.) — 

To  the  Commissioner  of  Patents. 

Your  petitioner  prays  that  he  may  be  allowed  to  surrender  the  letters 
patent  for  an  improvement  in  coal-scuttles,  granted  to  him  May  16,  1867, 
whereof  he  is  now  sole  owner,  [or,  "whereof  Henry  Bates,  on  whose  be- 
half and  with  whose  assent  this  application  is  made,  is  now  sole  owner,  by 
assignment,"]  and  that  letters  patent  may  be  reissued  to  him  for  the  same 
invention,  upon  the  annexed  amended  specification. 

RICHARD  JONES. 

378.  PETITION  FOR  A  REISSUE,  (BY  ASSIGNEES.) — 

[To  be  used  only  when  the  inventor  is  dead.] 
To  the  Commissioner  of  Patents: 

Your  petitioners  pray  that  they  may  be  allowed  to  surrender  the  letters 
patent  for  an  improvement  in  coal-scuttles,  granted  May  16, 1867,  to  Rich- 
ard Jones,  now  deceased,  whereof  they  are  now  owners,  by  assignment,  of 
the  entire  interest,  and  that  letters  patent  may  be  reissued  to  them  for  the 
same  invention,  upon  the  annexed  amended  specification. 

JOHN  TOWEES. 
ARCHIBALD  SOMEBS. 


REISSUES.  583 

379.  OATH  BY  AN  APPLICANT  FOR  A  REISSUE,  (INVENTOR.) 

STATE  OF  PENNSYLVANIA,        ) 

f  88 

City  and  County  of  Philadelphia,  ) 

Thaddeus  Tompkins,  the  above-named  petitioner,  being  duly  sworn,  (or 
affirmed,)  deposes  and  says  that  he  verily  believes  that,  by  reason  of  an 
insufficient  and  defective  specification,  his  aforesaid  letters  patent  are  inop- 
erative and  invalid ;  that  the  said  error  has  arisen  from  inadvertence,  acci- 
dent, or  mistake,  and  without  any  fraudulent  or  deceptive  intention,  to 
the  best  of  his  knowledge  or  belief;  that  he  is  the  sole  owner  of  said  let- 
ters patent,  [or,  "that  Henry  Bates  is  the  sole  owner  of  said  letters  pat- 
ent, and  that  this  application  is  made  on  the  behalf  and  with  the  consent 
of  said  Bates;"]  and  that  he  verily  believes  himself  to  be  the  first  and 
original  inventor  of  the  improvement  set  forth  in  this  amended  specifica- 
tion. THADDEUS  TOMPKINS. 

Sworn  to  and  subscribed  before  me  this  26th  day  of  July,  1869. 

r*r.        _  «_._  -,  CHARLES  CANDID, 

.NOTARIAL  OEAL. 

Notary  Public. 

380.  OATH  BY  AN  APPLICANT  FOR  A  REISSUE,  (ASSIGNEE.) 

[To  be  used  only  when  the  inventor  is  dead.] 
STATE  OF  VIRGINIA,  ) 

I  55. 

City  of  Richmond.    ) 

Martin  Halstead  and  Norris  Brown,  the  above-named  petitioners,  being 
duly  sworn,  (or  affirmed,)  depose  and  say  they  verily  believe  that,  by  rea- 
son of  an  insufficient  and  defective  specification,  the  aforesaid  letters  patent 
granted  to  Amos  Mygatt  are  inoperative  and  invalid ;  that  the  said  error 
has  arisen  from  inadvertence,  accident,  or  mistake,  and  without  any  fraud- 
ulent or  deceptive  intention,  to  the  best  of  their-  knowledge  and  belief; 
that  the  entire  title  to  said  letters  patent  is  vested  in  them ;  and  that  they 
verily  believe  the  said  Amos  Mygatt  to  be  the  first  and  original  inventor 
of  the  invention  set  forth  and  claimed  in  the  foregoing  amended  specifica- 
tion; and  that  the  said  Amos  Mygatt  is  now  deceased. 

MAETIN  HALSTEAD. 

NORRIS  BROWN. 

Sworn  to  and  subscribed  before  me  this  14th  day  of  November,  1869. 

MOREISOS  WHITE, 
Alderman  and  Justice  of  the  Peace  ex  officio. 


584 


PEOCEDURE  IN  THE  PATENT  OFFICE 


XXII.  Extension. 


SEC. 

381.  R6sum6  of  the  law. 

382.  Duty  of  applicant. 

383.  Assignee  cannot  apply. 

384.  When  application  may  be  filed 

by  attorney. 

385.  When  application  must  be  filed. 

386.  Administrator  may  apply. 
387-  Publication  of  notice. 

388.  Reference  to  examiner. 

389.  Opposition. 

390.  Testimony  in  contested  cases. 

391.  Service  of  notice  to  take  testi- 

mony. 

392.  Hearing. 

393.  Applicant  to  furnish  statement 

under  oath. 

394.  Divisions  of  a  reissue. 

395.  Questions  considered  and  proof 

required. 

396.  As  to  novelty. 


SEC. 

397.  As  to  value  and  importance. 

398.  As  to  remuneration. 

399.  As  to  policy. 

400.  Granting  the  extended  term. 

401.  Effect  of  extension. 

402.  Action  of  Commissioner. 

403.  Rights  of  assignees. 

404.  Extension    by  special  act  of 

Congress. 

405.  Rights  of  assignees. 

406.  Petition  by  patentee. 

407.  Petition  by  administrator. 

408.  Form  of  statement  of  account 

409.  Oath  by  patentee. 

410.  Oath  by  executor. 

411.  Reasons    for  opposing  exten- 

sion. 

412.  Reasons  by  a  corporation. 

413.  Oath  to  loss  of  letters  patent. 

414.  Certificate  of  extension. 


381.  RESUME  OF  THE  LAW. — The  Secretary  of  State, 
Commissioner  of  Patents,  and  Solicitor  of  the  Treasury 
Department  were,  by  the  act  of  July  4, 1836,  §  18,  consti- 
tuted a  board  of  commissioners  to  hear  evidence  for  and 
against  the  extension  of  patents,  and  to  decide  whether, 
having  due  regard  for  the  public  interest  therein,  it  is 
just  and  proper  that  the  term  of  the  patent  should  be 
extended  because  the  patentee  has  failed  to  obtain  a  rea- 
sonable remuneration.  The  commissioners  being  satis- 
fied that  the  patent  ought  to  be  renewed,  it  was  made 
the  duty  of  the  Commissioner  of  Patents  to  make  a  cer- 
tificate on  the  original  patent,  showing  that  it  extended 


EXTENSION.  585 

for  a  further  term  of  seven  years  from  the  expiration  of 
the  first  term.  By  the  act  of  1848,  §  1,  this  power  was 
vested  solely  in  the  Commissioner  of  Patents,  who  was 
thereby  required  to  refer  the  application  to  the  principal 
examiner  having  charge  of  the  class  of  inventions  to 
which  the  case  belongs;  and,  upon  his  report,  to  grant  or 
refuse  the  patent,  upon  the  same  principles  and  rules  that 
had  governed  the  board  provided  by  the  former  act.  The 
act  of  March  2,  1861,  §  16,  enacted  that  "  all  patents 
hereafter  granted  shall  remain  in  force  for  the  term  of 
seventeen  years  from  the  date  of  issue,  and  all  extension 
of  such  patents  is  hereby  prohibited;"  and  the  act  of 
July  8,  1870,  contains  substantially  the  same  provision; 
consequently,  all  patents  granted  after  the  passage  of  the 
act  of  1861  are  incapable  of  being  extended,  but  patents 
granted  before  that  date  may  still  be  extended  on  appli- 
cation. (Curtis  on  Patents,  285.)  * 

382.  DUTY  OF  APPLICANT. — Where  the  patentee  of  any 
invention  or  discovery,  the  patent  for  which  was  granted 
prior  to  the  second  day  of  March,  1861,  shall  desire  an  ex- 
tension of  his  patent  beyond  the  original  term  of  its  lim- 
itation, he  shall  make  application  therefor,  in  writing,  to 
the  Commissioner,  setting  forth  the  reasons  why  such 
extension  should  be  granted;  and  he  shall  also  furnish  a 
written  statement  under  oath  of  the  ascertained  value  of 
the  invention  or  discovery,  and  of  his  receipts  and  ex- 
penditures on  account  thereof,  sufficiently  in  detail  to 
exhibit  a  true  and  faithful  account  of  the  loss  and  profit 
in  any  manner  accruing  to  him  by  reason  of  said  inven- 
tion or  discovery.    (Act  of  July  8, 1870,  §  63.) 

383.  ASSIGNEE  CANNOT  APPLY. — Although  the  inven- 
tion was  sold  and  assigned  before  the  patent  was  obtained, 


586  PROCEDURE  IN  THE  PATENT  OFFICE. 

and  the  extended  term  was  sold  to  the  same  man,  the 
application  for  extension  should  be  made  in  the  name  of 
the  patentee.  ( Van  Vliet  ex  parte,  Commissioners'  Decis- 
ions, 1869,  p.  93.) 

384.  WHEN  APPLICATION  MAY  BE  FILED  BY  ATTORNEY. — 
In  the  matter  of  the  application  of  Henry  Voelter  for  ex- 
tension, Acting  Commissioner  Duncan  says:  "Question 
arises  in  this  case  as  to  the  sufficiency  of  the  proceedings 
under  which  the  application  was  filed. 

"  The  law  requires  that  a  patentee  who  is  desirous  of 
extending  his  patent  beyond  the  term  of  its  limitation 
shall  make  application  in  writing,  &c.,  and  that  such  ap- 
plication shall  be  filed  at  least  ninety  days  before  the  ex- 
piration of  the  patent. 

"Under  this  ninety  days'  limitation  Voelter's  applica- 
tion should  have  been  in  the  Patent  Office  as  early  as 
June  1,  In  point  of  fact,  the  petition  which  bears  his 
own  signature  was  not  received  until  July  2;  but  on  the 
twenty-third  day  of  May  a  duplicate  of  this  petition  was 
filed  in  the  office  by  the  inventor's  retained  counsel,  the 
inventor's  name  being  signed  by  such  counsel  in  his  char- 
acter of  attorney  or  agent. 

"  The  requisite  extension  fee  was  paid  on  the  same  day, 
and  the  petition  was  accompanied  with  an  affidavit  by 
the  party  filing  it,  in  which  he  set  forth  his  relations  to 
the  case,  and  alleged  that  he  had  prepared  and  seasonably 
forwarded  the  original  petition  to  the  inventor's  residence, 
in  Germany,  for  his  proper  signature,  but  that,  from  re- 
cent telegraphic  correspondence  with  him,  it  was  feared 
that  this  would  not  be  received  back  in  time  to  meet  the 
requirement  of  the  statute  if  dependence  were  to  be  placed 
upon  it  alone. 


EXTENSION.  587 

"  No  serious  question  can  be  made  as  to  the  imperative 
character  of  the  provision  of  .law  which  fixes  a  limit  of 
time  for  filing  the  petition.  It  is  not  an  enactment  ad- 
dressed to  the  discretion  of  the  Commissioner,  but  it  is 
mandatory  upon  him;  and  he  is  as  much  required  to  in- 
sist upon  a  literal  compliance  with  it  as  with  those  pro- 
visions of  law  which  make  it  obligatory  upon  an  appli- 
cant for  a  patent  to  take  and  subscribe  the  oath  of  inven- 
tion, to  complete  the  application  within  two  years  after 
filing  the  petition,  or  to  pay  the  final  fee  within  six  months 
after  notice  of  allowance. 

"  Passing  this  point,  then,  we  come  to  the  inquiry 
whether  the  filing  an  application  for  an  extension  is  an 
act  that  must  be  done  by  the  patentee  in  propria  pefsona, 
or  one  that  may  also  be  performed  by  his  duly  authorized 
agent. 

"For  obvious  reasons  the  law  requires  that  the  specifi- 
cation of  a  patent  be  signed  by  the  inventor  himself,  if 
living.  The  oath,  too,  in  original  applications  for  patents, 
if  not  also  in  applications  for  extensions,  is  a  personal 
matter,  and  must  be  made  by  the  applicant  himself. 

"But  the  petition  stands  on  a  different  basis.  This  is  a 
matter  of  form  merely.  Its  object  in  an  extension  case 
is  simply  to  notify  the  office  that  the  petitioner  enters 
suit  for  an  extension  of  the  patent;  and  the  object  of  the 
requirement  that  such  notice  be  filed  ninety  days  before 
the  expiration  of  the  original  term  is  to  enable  the  office 
to  give  the  necessary  publicity  to  the  application  by  pub- 
lishing it  in  the  mode  prescribed  for  sixty  days  prior  to 
the  day  of  hearing.  Manifestly  this  can  be  done  equally 
well  whether  the  original  notice  comes  from  the  hand  of 
the  party  in  interest  or  from  his  recognized  agent.  There 


588  PROCEDURE  IN  THE  PATENT  OFFICE. 

is  nothing  in  the  law  that  seems,  directly  or  impliedly, 
to  forbid  the  reception  of  the  petition  when  signed  by 
attonaey;  and  in  the  absence  of  any  such  statutory  pro- 
hibition, it  is  believed  that  a  liberal  policy  in  this  regard 
is  fully  warranted  by  the  analogies  that  obtain  in  the 
general  law  of  principal  and  agent. 

"  If  so,  it  is  immaterial  in  the  present  case  that  the  in- 
ventor's agent  has  not  produced  a  written  power  of  attor- 
ney for  the  performance  of  this  specific  act.  His  employ- 
ment as  counsel  for  the  extension  in  the  inventor's  behalf, 
and  the  responsibility  put  upon  him  of  preparing  the 
papers  relating  thereto,  are  sufficient  to  establish  the  fact 
of  agency;  and  no  principle  is  better  established  than 
that  -an  agent  who  is  intrusted  with  general  powers  has 
all  the  implied  powers  within,  the  scope  of  his  employ- 
ment. 

"It  would  be  unnecessary  even  that  the  agency  be  an- 
tecedently created,  since  an  acquiescence  by  the  principal 
in  the  assumed  agency  of  another,  when  the  acts  of  the 
volunteer  agent  are  brought  to  his  knowledge,  is  equiv- 
alent to  an  express  authority. 

"  In  the  present  instance,  however,  not  only  was  there 
the  pre-existing  general  agency,  but  the  specific  act  of 
filing  the  duplicate  petition  was  in  effect  ratified  by  the 
principal  when  he  signed  and  filed  the  original.  It  is 
held,  therefore,  that  the  law  in  relation  to  the  filing  of 
applications  for  extensions  has  been  complied  with  by 
the  present  applicant."  (Commissioners'  Decisions,  August 
26,  1870.) 

The  decision  of  Acting  Commissioner  Duncan,  in  the 
case  of  Yoelter,  was  subsequently  adopted  by  the  Com- 
missioner. In  the  case  of  Garriques  ex  parte  the  Com- 


EXTENSION.  589 

missioner  says:  "A  petition  for  the  extension  signed  by 
the  administrator,  per  attorney,  was  filed  June  9, 1870, 
and  one  by  the  administrator  himself  was  filed  on  June 
16.  The  first  of  these  was  filed  more  and  the  second  less 
than  ninety  days  prior  to  the  expiration  of  the  patent. 
It  is  insisted  by  the  opponents  of  the  extension,  whose 
notice  of  opposition,  it  may  be  remarked,  is  liable  to  the 
same  objection,  that  the  law  requires  the  petition  to  be 
signed  by  the  applicant  in  propria  persona,  and  that  the 
petition  signed  by  the  attorney  is  a  nullity. 

"This  precise  point  has  just  been  decided  by  the  Act- 
ing Commissioner  in  the  case  of  Henry  Voelter's  exten- 
sion. I  agree  with  him  in  the  opinion  which  he  has 
expressed  and  adopt  his  conclusion  as  my  own.  Undoubt- 
edly it  is  the  better  practice  for  the  applicant  himself  to 
file  the  petition,  and  I  should  require  some  reason  to  be 
given  in  cases  where  the  act  is  sought  to  be  performed 
by  attorney.  Satisfactory  reasons  are  given  in  Voelter's 
case  and  in  the  one  under  consideration.  In  the  present 
case  it  appears  that  the  estate  had  been  fully  administered 
and  distributed,  and  the  administrator,  doubting  his  right 
to  do  so,  was  reluctant  to  appear.  He  did  not,  perhaps, 
realize  that  his  relation  to  the  patent  was  rather  that  of 
trustee  for  the  benefit  of  the  heirs,  than  of  administrator 
of  undistributed  assets.  When  convinced  of  his  right  to 
prosecute  the  application,  the  time  was  so  far  spent  that 
the  rights  of  the  heirs  could  only  be  saved  by  a  petition 
filed  by  attorney. 

"  The  statement,  however,  is  duly  made  and  sworn  to  by 
the  administrator.  The  petition  is  a  formal  paper,  bring- 
ing the  case  before  the  office  preliminary  to  the  substan- 
tial pleading,  which  is  the  statement,  and  no  good  reason 
50 


590  PROCEDURE  IN  THE  PATENT  OFFICE. 

is  perceived  for  refusing  to  receive  it  when  executed  by 
the  applicant,  through  the  medium  of  an  agent,  whose 
acts  are  duly  authorized  or  ratified,  when  the  circum- 
stances are  such  as  to  justify  the  employment  of  such 
agency."  (Commissioners'  Decisions,  September  5, 1870.) 

385.  WHEN  APPLICATION  MUST  BE  FILED. — The  appli- 
cation shall  be  filed  not  more  than  six  months  nor  less 
than  ninety  days  before  the  expiration  of  the  original 
term  of  the  patent,  and  no  extension  shall  be  granted 
after  the  expiration  of  said  original  terra.  (Act  of  July 
8,  1870,  §  63.) 

In  the  case  of  J.  T.  &  R.  R.  Smith  the  Commissioner 
says:  "On  August  8,  1870,  applicants  presented  a  peti- 
tion for  an  extension  of  the  patent  granted  to  intestate, 
which  they  offered  to  file  in  the  Patent  Office.  The  patent 
will  expire  November  4,  1870.  There  would,  therefore, 
be  but  eighty-nine  days  between  the  day  of  the  filing  of 
the  application  and  the  day  of  the  expiration  of  the  pat- 
ent, if  both  of  those  days  were  included. 

"Section  63,  act  of  July  8,  1870,  provides  that  the 
application  for  an  extension  '  shall  be  filed  not  more  than 
six  months  or  less  than  ninety  days  before  the  expiration 
of  the  original  term  of  the  patent.' 

"The  Commissioner  has  no  power  to  waive  this  ex- 
press 'provision  of  the  law  or  to  excuse  the  applicants  for 
non-compliance.  The  language  of  the  statute  is  positive, 
and  has  been  universally  treated  as  admitting  of  no  ex- 
ercise of  discretion.  Accordingly,  in  many  cases  in  which 
the  delay  seemed  unavoidable,  Congress  has  interposed 
to  grant  relief  by  the  passage  of  special  acts,  as  well  before 
as  after  the  expiration  of  the  patent. 

"The  petition  in  the  present  case  cannot  be  received. 


EXTENSION.  591 

The  fee  of  $50  deposited  by  applicants  will  be  returned 
to  them."     (Commissioners'  Decisions,  September  22, 1870.) 

386.  ADMINISTRATOR  MAY  APPLY. — If  a  patentee  is  dead 
his  administrator  may  apply  for  and  obtain  an  extension 
of  the  patent.     (Nymaris  cases,  3  Opinions  of  Attorneys 
General,  446 ;  Brooks  v.  Bicknell,  3  McLean,  258 ;  Washburn 
v.  Gould,  3  Story,  133;  Woodworth  v.  Wilson,  4  How.,  716.) 
And  this,  although  the  original  patentee  had  in  his  life- 
time disposed  of  all  his  interest  in  his  patent.     ( Wilson 
v.  Bosseau,  4  How.,  675.) 

387.  PUBLICATION  OF  NOTICE. — Upon  the  receipt  of 
such  application,  and  the  payment  of  the  duty  required 
by  law,  the  Commissioner  shall  cause  to  be  published  in 
one  newspaper  in  the  city  of  Washington,  and  in  such 
other  papers  published  in  the  section  of  the  country 
most  interested  adversely  to  the  extension  of  the  patent 
as  he  may  deem  proper,  for  at  least  sixty  days  prior  to 
the  day  set  for  hearing  the  case,  a  notice  of  such  appli- 
cation, and  of  the  time  and  place  when  and  where  the 
same  will  be  considered.     (Act  of  July  8,  1870,  §  64.) 

388.  CASE  TO  BE  REFERRED  TO  EXAMINER. — On  the 
publication  of  such  notice,  the  Commissioner  shall  refer 
the  case  to  the  principal  examiner  having  charge  of  the 
class  of  inventions  to  which  it  belongs,  who  shall  make 
to  said  Commissioner  a  full  report  of  the  case,  and  par- 
ticularly whether  the  invention  or  discovery  was  new 
and  patentable  when  the  original  patent  was  granted. 
(Ib.,  §  65.) 

389.  OPPOSITION. — Any  person  may  appear  and  show 
cause  why  the  extension  should  not  be  granted.     (Ib., 
§  64.)    Any  person  who  intends  to  oppose  an  application 
for  extension  may,  at  any  time  after  such  application  has 


592  PROCEDURE  IN  THE  PATENT  OFFICE. 

been  made,  give  notice  of  such  intention  to  the  appli- 
cant. After  this  he  will  be  regarded  as  a  party  in  the 
case,  and  will  be  entitled  to  notice  of  the  time  and  place 
of  taking  testimony;  to  a  list  of  names  and  residences 
of  the  witnesses  whose  testimony  may  have  been  taken 
previous  to  his  service  of  notice  of  opposition ;  to  a  copy 
of  the  application;  and  to  any  other  papers  on  file,  upon 
paying  the  cost  of  copying.  (Patent  Office  Rules,  July, 
1870.)  Any  person  opposing  an  extension  must  file  his 
reasons  of  opposition  in  the  Patent  Office  at  least  twenty 
days  before  the  day  of  hearing.  (Ib.} 

390.  TESTIMONY  IN  CONTESTED  CASES. — In  case  of  op- 
position to  the  extension  of  a  patent  by  any  person,  both 
parties  may  take  testimony,  each  giving  reasonable  no- 
tice to  the  other  of  the  time  and  place  of  taking  said  tes- 
timony, which  shall  be  taken  according  to  the  rules  pre- 
scribed by  the  Commissioner  in  cases  of  interference. 
(/&.)     In  contested  cases  no  testimony  will  be  received, 
unless  by  consent,  which  has  been   taken  within  thirty 
days  next  after  the  filing  of  the  petition  for  the  exten- 
sion.    (Ib.) 

391.  SERVICE  OF  NOTICE  TO  TAKE  TESTIMONY. — Service 
of  notice  to  take  testimony  may  be  made  upon  applicant, 
upon  the  opponent,  upon  the  attorney  of  record  of  either, 
or,  if  there  be  no  attorney  of  record,  upon  any  attorney 
or  agent  who  takes  part  in  the  service  of  notice  or  the 
examination  of  the  witnesses  of  either  party.     Where 
notice  to  take  testimony  has  already  been  given  to  an 
opponent,  and  a  new  opponent  subsequently  gives  notice 
of  his  intention  to  oppose,  the  examination  need  not  be 
postponed,  but  notice  thereof  may  be  given  to   such 
subsequent  opponent  by  mail  or  by  telegraph.      This 


EXTENSION.  593 

rule,  however,  does  not  apply  to  ex  parte  examinations, 
or  those  of  which  no  notice  has  been  given  when  notice 
of  opposition  is  served.  (Ib.) 

392.  HEARING. — The  Commissioner  shall,  at  the  time 
and  place  designated  in  the  published  notice,  hear  and 
decide  upon  the  evidence  produced,  both  for  and  against 
the  extension.  (Act  of  July  8,  1870,  §  66.) 

In  the  notice  of  the  application  for  an  extension  a  day 
will  be  fixed  for  the  closing  of  the  testimony,  a  day  ten 
days  later  for  the  reception  of  arguments  and  for  the 
filing  of  the  examiner's  report,  and  a  day  five  days  after 
this  for  a  hearing;  but  no  case  will  be  set  for  a  hearing 
more  than  three  weeks  prior  to  the  expiration  of  the 
patent.  Applications  for  a  postponement  of  the  hearing 
must  be  made  and  supported  according  to  the  same  rules 
as  are  to  be  observed  in  cases  of  interference;  but  they 
will  not  be  granted  in  such  a  manner  as  to  cause  a  risk 
of  preventing  a  decision  in  season.  (Patent  Office  Rules, 
July,  1870.) 

893.  APPLICANT  TO  FURNISH  STATEMENT  UNDER  OATH. 
The  applicant  for  an  extension  must  furnish  to  the  office 
a  statement  in  writing,  under  oath,  of  the  ascertained 
value  of  the  invention,  and  of  his  receipts  and  expend- 
itures on  account  thereof,  both  in  this  and  foreign  coun- 
tries. This  statement  must  be  made  particular  and  in 
detail,  unless  sufficient  reason  is  set  forth  why  such  a 
statement  cannot  be  furnished.  It  must  be  filed  within 
thirty  days  after  filing  the  petition.  (Ib.) 

394.  DIVISIONS  OF  A  REISSUE. — When  a  patent  has 
been  reissued  in  two  or  more  divisions,  separate  appli- 
cations must  be  made  for  the  extension  of  each  divis- 
ion. (76.) 


594  PROCEDURE  IN  THE  PATENT  OFFICE. 

395.  QUESTIONS  CONSIDERED  AND  PROOF  REQUIRED. — 
The  questions  which  arise  oh  each  application  for  an  ex- 
tension are: 

First.  "Was  the  invention  new  and  useful  when  pat- 
ented? 

Second.  Is  it  valuable  and  important  to  the  public,  and  to 
what  extent? 

Third.  Has  the  inventor  been  reasonably  remunerated 
for  the  time,  ingenuity,  and  expense  bestowed  upon  it, 
and  the  introduction  of  it  into  use?  If  not,  has  his 
failure  to  be  so  remunerated  arisen  from  neglect  or  fault 
on  his  part  ? 

Fourth.  "What  will  be  the  effect  of  the  proposed  ex- 
tension upon  the  public  interests? 

No  proof  will  be  required  from  the  applicant  upon  the 
first  question,  unless  the  invention  is  assailed  upon  those 
points  by  opponents. 

To  enable  the  Commissioner  to  come  to  a  correct  con- 
clusion in  regard  to  the  second  point  of  inquiry,  the 
applicant  should,  if  possible,  procure  the  testimony  of 
persons  disinterested  in  the  invention,  which  testimony 
should  be  taken  under  oath.  This  testimony  should 
have  relation  to  nothing  but  what  is  actually  covered  by 
the  claims  of  the  patent. 

In  regard  to  the  third  point  of  inquiry,  in  addition  to 
his  own  oath,  showing  his  receipts  and  expenditures  on 
account  of  his  invention,  the  applicant  should  show,  by 
testimony  under  oath,  that  he  has  taken  all  reasonable 
measures  to  introduce  his  invention  into  general  use; 
and  that,  without  neglect  or  fault  on  his  part,  he  has 
failed  to  obtain  from  the  use  and  sale  of  the  invention  a 
reasonable  remuneration  for  the  time,  ingenuity,  and 


EXTENSION.  595 

expense  bestowed  on  the  same,  and  the  introduction  of 
it  into  use.     (Ib.} 

396.  As  TO  NOVELTY. — A  patent  for  a  useless  machine 
having  been  reissued  with  fourteen  claims,  of  which  but 
one  embraced  a  device  capable  of  advantageous  use,  and 
that  an  obvious  device,  and  the  patentee  having  sold  the 
extended  term  for  a  limited  sum,  an  extension  of  it, 
which  would  subject  the  trade  to  a  heavy  royalty,  was  de- 
nied, (Lupton  ex  parte,  Commissioners'  Decisions,  1869,  p. 
10.)  The  question  whether  an  invention  was  sufficiently 
perfected  when  the  patent  was  granted  having  been  con- 
sidered at  the  time,  and  discussed  upon  trials  in  which 
the  patent  was  sustained,  should  not  be  agitated  anew 
upon  an  application  for  an  extension  without  cogent  rea- 
sons, (Burrows,  ib.,  48.)  A  patent  will  be  extended  upon 
the  applicant's  disclaiming  a  feature  which  had  been  an- 
ticipated, (Crocker,  ib.,  85;  Woodbury,  ib.,  86;  Bailey,  ib., 
93.)  Although  a  patent  covering  the  principle  on  which 
a  process  depends  has  already  been  extended,  yet  a  patent 
to  another  person,  who  first  discovered  the  method  of 
making  the  principle  available,  and  reduced  it  to  a  suc- 
cessful practice,  will  also  be  extended,  ( Wetherill,  ib.,  87.) 
A  patent  will  not  be  extended  unless  it  is  restricted  to 
the  special  use  described  of  the  device  which  is  named,  if 
the  device  is  one  which  has  been  known  before  in  other 
applications;  if  the  claim  embraces  it  in  general  terms, 
it  is  not  enough  to  disclaim  the  former  application  of  it, 
(Stone,  ib.,  48.)  A  patent  may  be  extended  notwithstand- 
ing the  claim  was  too  broad,  there  not  being  sufficient 
time  to  correct  it  by  a  reissue,  (Crocker,  ib.,  85.)  It  is 
sufficient  if,  upon  an  extension,  old  devices  are  dis- 
claimed, except  when  used  in  a  certain  combination 


596  PROCEDURE  IN  THE  PATENT  OFFICE. 

which  is  new,  (Woodbury,  ib.,  86.)  "Where  matters  have 
been  improperly  interpolated  in  a  reissued  patent,  an  ex- 
tension of  it  will  be  refused,  (Krake,  ib.,  100.) 

Upon  an  application  for  an  extension  of  a  patent  the 
law  requires  a  very  rigid  scrutiny  into  the  original  claim 
of  the  patentee  as  to  the  novelty  and  utility  of  the  in- 
vention. (Swift  v.  Whissen,  3  Fish.,  343.) 

397.  As  TO  VALUE  AND  IMPORTANCE. — Sales  made  under 
embarrassments  are  not  a  criterion  of  value  upon  a  peti- 

.tion  for  an  extension,  ( Waterman  ex  parte,  Commissioners' 
Decisions,  51.)  Although  an  invention  was  estimated  at  a 
high  rate  by  witnesses,  yet  as  no  machine  was  ever  made 
in  accordance  with  the  patent,  and  it  had  been  sold  back 
and  forth  at  a  nominal  price,  it  was  set  down  as  of  little 
value,  (Barrett,  ib.,  40.)  An  extension  will  be  refused  for 
the  sole  reason  that  the  invention  was  of  slight  import- 
ance, (Allender,  ib.,  46.)  The  extension  of  a  patent  will 
be  refused  when  the  only  invention  shown  to  be  of  any 
value  was  improperly  interpolated  upon  a  reissue,  and 
did  not  appear  in  the  original  application,  (Goodale,  ib., 
82.)  Where  the  invention  as  described  in  the  original 
patent  was  never  embodied  in  machines,  the  applicant 
will  not  be  allowed  to  resort,  in  order  to  show  its  value, 
to  machines  manufactured  under  a  reissue,  in  which  old 
devices  have  been  described  and  claimed,  (Taggart,  ib., 
102.)  Upon  applications  for  the  extension  of  a  patent 
the  value  of  the  invention  will  be  estimated  according 
to  what  it  was  as  described  in  the  original  patent,  irre- 
spective of  modifications  improperly  interpolated  upon 
a  reissue,  (Taggart,  ib.,  102.) 

398.  As  TO  REMUNERATION. — In  estimating  the  profits 
derived  from  a  patented  invention,  only  half  of  those 


EXTENSION.  597 

which  have  been  made  upon  it  in  connection  with  another 
should,  prima  facie,  be  charged  to  it,  (Brown,  ib.,  10.) 
"Whe^e  the  invention  could  have  cost  but  little  time,  inge- 
nuity, or  expense,  was  not  of  great  public  importance, 
and  the  patentee  had  reaped  from  it  $64,594  86,  his  appli- 
cation for  an  extension  was  refused,  (Tucker,  z'6.,39.) 

399.  As  TO  POLICY. — A  patent  will  not  be  extended 
when  it  would  give  the  control  of  an  important  manu- 
facture to  assignees,  who  are  to  pay  the  inventor  but 
one-fifth  of  the  profits,  (Heck,  ib.,  p.  19.)     The  patentee's 
want  of  diligence  in  originally  applying  for  his  patent 
is  an  objection  to  its  being  extended,  (Heck,  ib.,  19.)    The 
extension  of  a  patent  should  be  refused  when  the  pat- 
entee has  done  no  more  under  it  than  to  manufacture 
a  few  articles,  has  sold  it  at  a  low  figure,  and  has  dis- 
posed of  most  of  his  interest  in  the  extension,  if  not  the 
whole,  ( Waters,  ib,,  42.)    Devices  not  shown  or  described 
in  the  original  application,  having  been  introduced  into 
a  reissue,  the  patentee  will  be  required  to  disclaim  them 
as  a  condition  of  extending  his  patent,  (Humiston,  ib., 
47.)     An  extension  will  not  be  granted  if  it  is  for  the 
benefit  of  an  assignee,  and  not  of  the  inventor,  (Van 
Vliet,  ib.,  93.) 

400.  GRANTING  THE  EXTENSION;   TERM. — If  it  shall 
appear  to  the  satisfaction  of  the  Commissioner  that  the 
patentee,  without  neglect  or  fault  on  his  part,  has  failed 
to  obtain  from  the  use  and  sale  of  his  invention  or  dis- 
covery a  reasonable  remuneration  for  the  time,  ingenuity, 
and  expense  bestowed  upon  it,  and  the  introduction  of  it 
into  use,  and  that  it  is  just  and  proper,  having  due  regard 
to  the  public  interest,  that  the  term  of  the  patent  should 
be  extended,  the  said  Commissioner  shall  make  a  certifi- 


598  PROCEDURE  IN  THE  PATENT  OFFICE. 

cate  thereon,  renewing  and  extending  the  said  patent  for 
the  term  of  seven  years  from  the  expiration  of  the  first 
term,  which  certificate  shall  be  recorded  in  the  Batent 
Office;  and  thereupon  the  said  patent  shall  have  the  same 
effect  in  law  as  though  it  had  been  originally  granted 
for  twenty-one  years.  (Act  of  July  8,  1870,  §  66.) 

401.  EFFECT  OF  EXTENSION. — A  renewed  patent  has  the 
same  obligation  and   confers  the  same  rights  with   an 
original  patent.     The  inchoate  property  which  vested 
by  the  discovery  is  prolonged  by  the  renewed  patent 
as  well   as  by  the  original  patent,  (Eoans  v.  Jordan,  1 
Brock.,  254,)  and  the  original  patent  becomes  virtually  a 
patent  for  twenty-one  years.  (Gibson  v. Harris,  1  Blatehf., 
169;    Wood-worth  v.  Edwards,  2  Wood.  $  Minot,  125.)      It 
is  not  essential  to  the  validity  of  a  renewed  patent  that 
all  the  proceedings  should  be  set  out  at  length ;   it  is 
enough  if  it  appears  that  the  subject  was  before  the 
proper  officer,  and  that  the  decision  was  in  favor  of  re- 
newal.    (Brooks  v.  Bicknell,  3  McLean,  435.) 

402.  ACTION  OF  THE  COMMISSIONER. — The  decision  of 
the  Commissioner  of  Patents  upon  an  application  for  an 
extension,  where  he  has  jurisdiction,  is  conclusive  as  to 
the  regularity  of  the  proceedings,  and  cannot  be  the  sub- 
ject of  examination  and  review  elsewhere,  except,  per- 
haps, in  case  of  fraud,  which  is   an    exception  to  the 
general  rule.     (Colt  v.  Young,  2  Blatehf.,  471;   Glum  v. 
Brewer,  2  Curt.,  506;  Brooks  v.  Bic knell,  3  McLean,  435; 
compare    Wilson  v.  Rosseau,  4  How.,  646.)      But  in  the 
case  of  Brooks  v.  Bicknell  it  was  held  that  the  decision  of 
the  board  of  commissioners,  (whose  power  is  now  vested 
in  the  Commissioner,)  while  conclusive  as  to  matters  of 
expense,  the  payment  of  the  money  required,  and  the 


EXTENSION.  599 

notice,  was  not  conclusive  as  to  the  question  of  law, 
whether  or  not  an  administrator  had  a  right,  under  the 
act  of  1836,  to  apply  for  an  extension.  (3  McLean,  250.) 

The  decision  of  the  Commissioner  extending  letters 
patent  could  not  have  been  made  without  proof  that  the 
patentee  had  not  derived  a  fair  profit  from  his  invention 
during  the  first  part  of  his  original  term;  and  such  decis- 
ion, having  been  made  after  public  notice  and  official 
investigation,  shows  that  throughout  the  United  States 
he  was  generally  considered,  as  he  was  still  considered 
at  the  Patent  Office,  the  first  inventor.  (Aiken  v.  Dolan, 
3  Fish.,  197.) 

A  notice  of  an  application  to  extend  the  original  pat- 
ent is  a  sufficient  notice  of  an  application  for  the  exten- 
sion of  a  reissue;  and  as  the  functions  of  the  Commis- 
sioner in  extension  cases  are  judicial,  his  judgment  settles 
conclusively  all  questions  of  notice.  ( Compton  v.  Belknap 
Mills,  3  Fish.,  536.) 

403.  RIGHT  OF  ASSIGNEES. — The  benefit  of  the  exten- 
sion of  a  patent  shall  extend  to  the  assignees  and  grantees 
of  the  right  to  use  the  thing  patented  to  the  extent  of 
their  interest  therein.  (Act  of  July  8,  1870,  §  67.) 

Under  the  patent  laws  prior  to  1836  a  license  or  assign- 
ment expired  with  the  limitation  of  the  original  patent, 
unless  it  was  expressly  in  terms  so  granted  as  to  be  ap- 
plicable to  any  renewal  of  the  patent  afterward.  ( Wash- 
burn  v.  Gould,  3  Story,  122,  135 ;  Woodworlh  v.  Sherman,  3 
Story,  171.)  The  rule  proceeded  upon  the  ground  that 
a  man  can  pass  by  grant  or  assignment  only  that  which 
he  possesses  and  which  is  in  existence  at  the  time;  and 
this  doctrine  is  expressly  applicable  to  licensees  and 
assignees  under  the  act  of  1836,  the  whole  design  of 


600  PROCEDURE  IN  THE  PATENT  OFFICE. 

which  is  confined  to  the  inventor  and  for  his  benefit,  and 
riot  for  the  benefit  of  his  licensee  or  assignee.  ( Wood- 
vxtrth  v.  Sherman,  3  Story,  171.)  Therefore,  the  extension 
of  a  patent  under  §  67  of  the  act  of  1870  does  not  inure 
to  the  benefit  of  assignees  or  grantees  under  the  original 
patent,  so  as  to  vest  in  them  any  exclusive  right;  but  the 
benefit  of  such  renewal  is  limited  to  those  who  were  in 
use  of  the  patented  article  at  the  time  of  the  renewal,  and 
insures  such  persons  the  right  to  use  the  machine  held 
by  them  at  the  time  of  such  renewal.  ( Wilson  v.  Rosseau, 
3  How.,  682.)  The  phrase  "  to  the  extent  of  their  interest 
therein"  means  their  interest  in  the  patented  machines, 
be  that  interest  in  one  or  more  at  the  time  of  the  exten- 
sion, (ib.;)  and  the  meaning  of  the  word  "thing  pat- 
ented," when  construed  in  connection  with  the  simple 
right  to  use,  has  reference  to  the  thing  patented.  (Ib.} 

The  right  of  the  assignee  is  limited  to  the  right  to  use, 
although  the  person  holding  it  may  also  have  held,  dur- 
ing the  original  term,  an  exclusive  right  to  make  and  vend. 
(Day  v.  Union  Rubber  Company,  3  Blatchf.,  491.) 

The  object  of  the  clause  as  to  assignees  is  to  preserve 
any  previous  contract  or  assignment  in  the  sense  in  which 
both  parties  understood  and  intended  it  at  the  time  it 
was  made.  (Wilson  v.  Turner,  7  Law  Reporter,  530.) 

A  patentee  cannot  convey  an  extended  patent  before 
the  extension.  (Day  v.  Candec,  3  Fish.,  9.)  He  may,  how- 
ever, agree,  upon  a  valuable  consideration,  to  convey  such 
right  whenever  it  shall  be  vested  in  him.  (Ib.} 

The  inchoate  right  of  an  inventor  to  an  extension  may 
be  the  subject  of  a  contract  of  sale,  (Clam  v.  Brewer,  2 
Curtis,  506,)  and  an  agreement  made  between  a  patentee, 
who  is  about  to  apply  for  a  renewal  of  his  patent,  with 


EXTENSION.  601 

another,  that  in  case  of  a  renewal  he  will  convey  to  him 
such  renewed  patent,  in  consideration  of  a  certain  Bum, 
is  valid,  and,  if  the  patent  is  renewed,  such  agreement 
conveys  to  the  assignee  an  equitable  interest  or  title, 
which  can  be  converted  into  a  legal  title  by  offering  to 
pay  the  agreed  consideration,  (Hartshorn  v.  Day,  19 -How., 
220;)  and  where  H  agreed  with  A  that,  upon  the  fulfill- 
ment of  certain  considerations,  he,  H,  would  assign  to  A 
the  extended  term  of  certain  letters  patent,  if  the  same 
should  be  extended,  it  was  held  that  if  the  conditions  had 
been  fulfilled,  H  would  have  become  the  equitable  owner 
of  the  extended  term.  (Allen  v.  Dolen,  3  Fish.,  197.) 

Where  J  contracted  to  convey  "  to  A  a  local  interest  in 
letters  patent,  to  the  utmost  and  fullest  extent  as  to  dura- 
tion that  he  is  or  may  be  entitled  to  under  the  said  let- 
ters patent,"  it  was  held  that  these  words  transferred  an 
equitable  title  to  the  same  local  interest  in  an  extension 
of  said  letters  patent  afterwards  obtained,  (Chase  v.  Walk- 
er, 3  Fish.,  120;)  but  a  provision  in  a  license,  that  a  priv- 
ilege is  to  continue  during  the  term  for  which  letters 
patent  are  or  may  be  granted,  is  satisfied  by  holding  it 
to  apply  exclusively  to  the  reissue  of  the  patent.  There 
is  nothing  in  the  language  which  makes  it  exclusively  or 
even  necessarily  applicable  to  an  extension.  (Hodge  v. 
Hudson  River  and  Harlem  Railroad,  3  Fish.,  410.) 

The  established  doctrine  therefore  is,  that  an  assignee 
of  a  patent,  holding,  at  the  expiration  of  the  first  term, 
a  right  during  that  term  to  make  and  use  the  thing  pat- 
ented, may,  during  the  term  of  its  subsequent  extension, 
continue  to  use  it,  and  even  repair  it  for  use,  but  he  can- 
not make  it  for  use  or  for  any  other  purpose,  ( Wood  v. 
Michigan  and  Southern  Railroad,  3  Fish.,  464;)  but  if  the 
51 


602         PROCEDURE  IN  THE  PATENT  OFFICE. 

patentee  has  agreed  for  a  valuable  consideration  to  con- 
vey the  right  in  the  extended  term  whenever  it  shall  be 
vested  in  him,  an  equitable  title  in  the  extension  of  the 
letters  patent  afterwards  obtained  is  transferred.  (Chase 
v.  Walker,  3  Fish.,  120;  Day  v.  Candee,  3  Fish.,  9.) 

Where  a  patent  has  been  extended  to  a  patentee,  it  is 
immaterial  whether  or  not  he  was  vested  with  the  entire 
interest  in  the  patent  at  the  time  of  a  surrender  and  re- 
issue made  prior  to  the  extension.  The  extension  vested 
an  absolute  and  complete  title  in  him,  (Potter  v.  Empire 
Sewing  Machine  Company,  3  Fish.,  474;)  and  a  reissue 
granted  to  an  assignee  may  be  extended  to  the  patentee. 
In  judgment  of  law,  a  reissue  is  only  a  continuation  of 
the  original  patent.  (Crompton  v.  Belknap  Mills,  ib.,  536.) 

404.  EXTENSION  BY  SPECIAL  ACT  OF  CONGRESS. — Con- 
gress may,  by  special  act,  extend  a  patent  even  after  the 
expiration  of  the  original  patent.  (Blanchard  Gun-Stock 
Company  v.  Warner,  1  Blatehf.,  274  ;  Blanchard  v.  Haynes, 
6  West.  Law  Jour.,  83.)  Congress  has  the  constitutional 
power  to  grant  an  extension  of  a  patent  after  it  has  once 
been  extended  under  §  18  of  the  act  of  1836.  (Bloomer 
v.  Slolley,  5  McLean,  160.)  There  is  no  provision  against 
such  second  extension.  The  policy  of  the  law  is  to  com- 
pensate the  inventor,  and  if  this  object  be  riot  attained 
by  a  first  extension,  there  would  seem  to  be  justice  in  a 
second.  (2b.}  An  act  of  Congress  is  not  unconstitu- 
tional because  it  acts  retrospectively  to  give  a  patent  for 
an  invention  which  was  in  public  use.  (Blanchard  v. 
Sprague,  3  Sumn.,  541.)  Such  act  of  Congress  is  to  be 
considered  as  ingrafted  on  the  general  laws  relating  to 
patents ;  they  are  statutes  in  pari  materia,  and  such  a  pat- 
ent is  issued  in  pursuance  of  both.  (Evans  v.  Eaton,  3 


EXTENSION.  603 

Wheat.,  518;  Bloomer  v.  McQuewan,  14  How.,  550.)  A 
patent,  when  extended  by  act  of  Congress,  after  an  ex- 
tension under  §  18  of  the  act  of  1836,  becomes  a  patent 
for  twenty-one  years.  (Gibson  v.  Harris,  1  Blatchf., 
169.) 

405.  RIGHT  OF  ASSIGNEES  UNDER  EXTENSION  BY  ACT  OF 
CONGRESS. — The  right  of  an  assignee  to  continue  to  use 
an  invention,  under  his  assignment  during  an  extension 
of  the  patent,  does  not  arise  when  the  extension  is  by 
special  act  of  Congress,  and  the  assignment  contains  no 
provision  to  give  such  right.  (Bloomer  v.  Stolley,  5  Mc- 
Lean, 158.)  But  in  Bloomer  v.  McQuewan,  (14  How.,  550,) 
in  which  case  it  was  held  that  one  in  the  lawful  use  of  a 
machine,  under  a  purchase,  during  the  original  term  of 
a  patent,  is  entitled  to  continue  such  use  during  an  ex- 
tension made  by  an  act  of  Congress,  unless  there  is  some- 
thing In  the  language  of  the  act  requiring  a  different 
construction.  To  enable  an  assignee  to  derive  any  ben- 
efit from  an  extension  of  a  patent  by  act  of  Congress,  an 
express  provision  should  be  inserted  in  the  grant  or  as- 
signment looking  to  such  a  renewal.  Unless  there  be 
such  a  stipulation,  showing  that  a  renewal  was  contem- 
plated, the  court  is  bound  to  construe  the  instrument  as 
relating  to  the  existing  right,  in  respect  to  which  the  par- 
ties are  considered  as  contracting  with  each  other.  (Gib- 
son v.  Cook,  2  Blatchf.,  144.)  If  there  is  no  reservation 
in  an  act  of  Congress  extending  a  patent  in  favor  of 
assignees,  they  have  no  right  under  the  term  thereby 
created,  and  they  cannot  even  continue  in  the  use  of 
machines  lawfully  constructed  before  such  term,  and 
actually  existing  and  in  use  when  the  former  term  ex- 
pired. (Gibson  v.  Gifford,  1  Blatchf.,  529.) 


604  PROCEDURE  IN  THE  PATENT  OFFICE. 

406.  PETITION  FOR  EXTENSION  BY  PATENTEE. — 

To  the  Commissioner  of  Patents  : 

Your  petitioner,  now  residing  at  Albion,  Orleans  county,  New  York, 
prays  that  the  letters  patent  No.  12,841,  for  an  improvement  in  steam- 
engines,  granted  to  him  August  17,  1853,  may  be  extended  for  seven  years 
from  and  after  the  expiration  of  the  original  term. 

JAMES  JOHNSON. 

407.  PETITION  FOR  EXTENSION  BY  AN  ADMINISTRATOR. 

To  the  Commissioner  of  Patents  : 

Your  petitioner,  Thomas  Twitcher,  administrator  of  the  estate  of 
Timothy  Tweedle,  deceased,  (as  by  reference  to  the  duly  certified  copy  of 
letters  of  administration,  hereto  annexed,  will  more  fully  appear,)  residing 
at  Pittsburg,  Allegheny  county,  Pennsylvania,  prays  that  letters  patent 
No.  12,842,  for  an  improvement  in  stoves,  granted  to  said  Timothy  Twee- 
die,  August  24,  1853,  may  be  extended  for  seven  years  from  and  after  the 
expiration  of  the  original  term.  THOMAS  TWITCHER, 

Administrator. 

408.  FORM  OF  STATEMENT  OF  ACCOUNT. — 

In  the  matter  of  the  application  of  Fanny  Forrester,  of  the  city,  county, 

and  State  of  New  York,  executrix  of  the  last  will  and  testament  of  De 

Witt  Forrester,  deceased,  for  extension   of   letters  patent  No.  10,817, 

granted  to  him  January  9,  1855,  for  improvement  in  mowing  machines. 

To  the  Commissioner  of  Patents: 

The  applicant  respectfully  represents  that,  prior  to  obtaining  the  letters 
patent  now  sought  to  be  extended,  the  said  De  Witt  Forrester  was  a  farmer. 
That  his  attention  was  called  to  the  subject  of  mowing  machines  by  the 
difficulty  of  cutting  grass  by  the  machines  then  in  use ;  that,  after  numer- 
ous patient  and  costly  experiments,  he  succeeded  in  perfecting  his  inven- 
tion and  in  obtaining  his  patent.  He  immediately  made  arrangements  to 
manufacture  the  improvement,  and  for  this  purpose  sold  three  fourths  of 
his  farm.  He  then,  with  others,  built  a  factory  and  commenced  operations ; 
but,  two  years  afterward,  the  establishment  was  destroyed  by  fire,  without 
insurance.  In  the  exposure  at  the  fire  Mr.  Forrester  contracted  a  disease 
which  confined  him  to  the  house  for  three  years,  when  he  died,  leaving  ap- 
plicant his  executrix  and  widow,  with  a  large  family  and  small  means. 
Nevertheless,  applicant  made  every  effort  to  induce  manufacturers  to  use 
the  improvement,  and  at  last  succeeded  in  inducing  the  firm  of  Weakly  & 
Co.,  of  Pemberton,  New  York,  to  recommence  the  manufacture  of  the  ma- 
chines. But  after  four  years  the  firm  failed,  being  largely  in  debt  to  appli- 


EXTENSION.  605 

cant  for  royalties.  After  this  it  became  impossible  for  applicant  to  do 
anything  witb  the  invention.  She  wrote  to  various  manufacturers  and 
made  personal  application  to  others,  but  found  them  unwilling  to  make 
arrangement  to  pay  royalties,  or  to  use  the  invention  in  any  way,  unless 
she  would  sell  the  patent,  including  the  extension,  for  a  nominal  sum.  She 
states,  however,  that  she  has  at  length  succeeded  in  perfecting  an  agree- 
ment with  Merriam  &  Co.,  of  Syracuse,  New  York,  conditioned  upon  the 
extension,  whereby  the  said  firm  agreed  to  manufacture  the  patented  ma- 
chines, and  to  pay  her  a  royalty  of  three  dollars  upon  each  one  made. 
Aside  from  the  interest  so  vested  in  Merriam  &  Co.,  the  entire  interest  in 
the  extension  remains  vested  in  her,  and  she  has  made  no  assignment,  con- 
tract, or  agreement  of  any  kind  for  the  sale  or  assignment  of  the  extended 
term  to  any  person  whatsoever. 

Owing  to  the  destruction  of  Mr.  Forrester's  books  in  the  fire,  it  is  im- 
possible to  prepare  an  accurate  account  of  receipts  and  expenditures,  but 
the  following  is  believed  to  be  as  correct  as  it  was  possible  to  make  it- 

Receipts. 

From  profits  from  business,  (for  particulars  of  which  see  Sched- 
ule A) $1,236  00 

From  royalties  from  Weakly  &  Co.,  (for  details  of  which  see 

Schedule  B) 2,341  50 

From  sale  of  shop  right  to  Brown  &  Jones,  Penn  Yan,  N.  Y 250  00 

Total  receipts $3,827  50 

Expenditures. 
Expense  of  procuring  patent $250  00 

Net  receipts $3.577  50 

The  invention  is  exceedingly  useful,  as  will  be  abundantly  proved  by 
the  testimony.  It  is  believed,  if  properly  understood  and  appreciated, 
that  it  would  now  be  incorporated  in  at  least  50,000  mowing  machines. 
Its  value  may  be  fairly  fixed  at  the  price  which  manufacturers  have  agreed 
to  pay  for  it,  which  is  three  dollars  per  machine.  If  this  estimate  is  even 
approximately  correct,  it  is  evident  that  the  public  have  been  greatly  ben- 
efited; while  the  fact  that  Mr.  Forrester  invested  his  entire  time  and 
means,  and  finally  lost  his  life  in  the  prosecution  of  his  invention,  is  re- 
spectfully offered  as  proof  that  he  has  not  been  adequately  remunerated  for 
his  time,  ingenuity,  and  expense  bestowed  upon  this  invention,  and  the 
introduction  thereof  into  use.  Respectfully  submitted, 

FAJTKY  FORBESIEB, 


606  PROCEDURE  IN  THE  PATENT  OFFICE. 

409.  OATH  BY  PATENTEE. —      * 

STATE  OF  NEW  YORK,   j 
County  of  Ontario,     J 

Edward  Monroe,  the  above-named  applicant,  being  duly  sworn,  (or 

affirmed,)  deposes  and  says  that  the  foregoing  statement  and  account  by 

him  signed  is  correct  and  true  in  all  respects  and  particulars,  to  the  best 

of  his  knowledge  and  belief.  EDWAED  MONBOE. 

Sworn  to  and  subscribed  before  me  this  1st  day  of  November,  A.  D.  1868. 

PAUL  PLACID, 
Justice  of  the  Peace. 

410.  OATH  BY  EXECUTOR. — 

UNITED  STATES  OF  AMERICA,  j 
Northern  District  of  Ohio.     ) 

Roger  Bacon,  executor  of  the  last  will  and  testament  of  Simon  New- 
come,  deceased,  being  duly  sworn,  (or  affirmed,)  deposes  and  says  that  the 
foregoing  statement  and  account  by  him  subscribed  is  correct  and  true  in 
all  respects  and  particulars,  to  the  best  of  his  information,  knowledge,  and 
belief.  ROGER  BACOI^, 

Executor,  &c. 

Sworn  to  and  subscribed  before  me  this  20th  day  of  May,  1869. 

WILLIAM  BLACKSIONE, 
U.  S.  Commissioner  for  the  Northern  District  of  Ohio. 

411.  REASONS  OF  OPPOSITION  TO  AN  EXTENSION,  (BY  INDI- 
VIDUALS.)— 

In  the  matter  of  the  application  of  Peter  Prolong,  for  an  extension  of  let- 
ters patent  for  improvements  in  sewing  machines,  No.  12,213,  dated  May 
15,  1855. 
To  the  Commissioner  of  Patents  : 

We  wish  to  oppose  the  application  above  referred  to,  for  the  following 
reasons,  viz : 

First.  Applicant  was  not  the  original  and  first  inventor  of  the  improve- 
ment claimed  by  him  in  said  letters  patent. 

Second.  If  said  alleged  invention  was  ever  made  by  applicant,  which  we 
deny,  it  is  not  useful. 

Third.  Said  invention  is  not  valuable  and  important  to  the  public. 
Fourth.  Applicant  has  been  adequately  remunerated  for  his  time,  inge- 
nuity, and-expense  in  originating  and  perfecting  his  alleged  invention. 


EXTENSION. 

Fifth.  Applicant  has  not  used  due  diligence  in  introducing  his  alleged 
invention  into  general  use. 

Sixth.  Applicant  has  assigned  to  other  parties  all  interest  in  the  exten- 
sion, and  the  extension,  if  granted,  would  not  be  for  his  benefit. 

(See  assignment  to  Veteran  Grimes,  dated  April  1,  1864 ;  recorded  June 
2,  1864,  in  liber  P°,  p.  217.) 

Seventh.  The  statement  and  account  filed  by  applicant  do  not  present 
a  true  statement  of  his  receipts  and  expenditures. 

DANIEL  DRIVER. 
SINCLAIR  SCORCHEM. 
JEREMIAH  JOINING. 
PAW-TUCKET,  RHODE  ISLAND,  July  19, 1869. 

412.  REASONS  OF  OPPOSITION  TO  AN  EXTENSION,  (BY  A 
CORPORATION.) — 

In  the  matter  of  the  application  of  Timothy  Twist,  for  an  extension  of  let- 
ters patent  for  improvements  in  process  for  dressing  thread,  No.  13,119, 
dated  May  19,  1855. 
To  the  Commissioner  of  Patents: 

The  Growler  Mills,  a  corporation  established  under  the  laws  of  Massa- 
chusetts, doing  business  at  Fall  River,  Massachusetts,  hereby  gives  notice 
of  intention  to  oppose  the  application  above  referred  to,  for  the  following 
reasons,  viz: 

First.  This  company  is  extensively  engaged  in  the  manufacture  and  sale 
of  sewing  thread  of  the  various  kinds  in  general  use,  having  large  sums 
of  money  invested  in  business.  It  has  been  accustomed  to  dress  thread  by 
sizing  and  brushing,  in  substantially  the  same  manner  as  warps  and  thread 
have  been  dressed  and  finished  for  many  years,  in  the  full  belief  that  such 
process  is  neither  new  nor  patentable.  The  said  manufacture  has  been  car- 
ried on  for  more  than  three  years,  with  the  knowledge  and  consent  of  said 
Timothy  Twist,  and  without  any  claim  to  royalty  or  other  compensation 
on  his  part,  or  pretense  that  he  was  the  inventor  of  the  said  process.  With- 
in the  past  six  months,  however,  he  has  threatened  this  corporation  with 
an  action  for  damages,  unless  an  exorbitant  sum  of  money  were  paid  to 
him. 

Second.  Said  letters  patent  are  valid  neither  in  law  nor  in  fact;  the 
alleged  invention  is  not  valuable  and  important  to  the  public,  and  an  exten- 
sion would  result  in  the  prolongation  of  a  vexatious  and  unfounded  claim, 
which  would  compel  a  resort  to  litigation  to  prove  the  utter  worthlessness 
of  said,  parent. 


608  PROCEDURE  IN  THE  PATENT  OFFICE. 

This  corporation  is  ready  to  substantiate  by  evidence  these  reasons  of 
objection. 

And  said  corporation  hereby  appoints  Messrs.  Morehead  &  Newton,  of 
Fall  River.  Massachusetts,  its  attorneys  and  counsel,  with  full  power  to 
represent  said  corporation  in  all  matters  relating  to  said  proposed  exten- 
sion. 

Witness  the  seal  of  said  corporation  and  the  signature  of  its  president,  at 
Fall  River,  Massachusetts,  this  3d  day  of  April,  A.  D.  1869. 

[SEAL.]  THE  GROWLER  MILLS. 

By  RODERICK  RITTENHOUSE,  President. 
[60-cent  revenue  stamp.] 

The  applicant  for  extension  is  required  to  forward  to 
the  Commissioner  the  original  patent.  If  the  patent  has 
been  lost  or  destroyed,  the  applicant  should  forward  a 
statement,  under  oath,  of  the  following  form : 

413.  OATH  TO  THE  Loss  OF  LETTERS  PATENT. — 

STATE  OF  MASSACHUSETTS,  ) 

>  ss. 
County  of  Suffolk.         j 

Charles  Careful,  of  said  county,  being  duly  sworn,  doth  depose  and  say, 
that  he  is  administrator  of  the  estate  of  Henry  Miner,  deceased,  late  of 
Boston,  in  said  county ;  that  the  letters  patent  No.  12,219,  granted  to  said 
Henry  Miner,  and  bearing  date  on  the  9th  day  of  January,  A.  D.  1855,  have 
been  lost  or  destroyed,  as  he  verily  believes ;  that  he  has  made  diligent 
search  for  the  said  letters  patent  in  all  places  where  the  same  would  proba- 
bly be  found,  if  existing,  and  especially  among  the  papers  of  the  decedent; 
and  that  he  has  not  been  able  to  find  said  letters  patent. 

CHARLES  CAREFUL, 

Administrator,  <&c. 

Subscribed  and  sworn  to  before  me  this  5th  day  of  October,  1868. 

PETER  PLACID, 

Justice  of  the  Peace. 

414.  FORM  OF  CERTIFICATE  OF  EXTENSION. — 

Whereas,  upon  the  petition  of  A.  W.,  of  Auburn,  in  the  State  of  New 
York,  for  the  extension  of  the  patent  granted  to  him  December  6, 1869,  and 
reissued  to  him  the  fourth  day  of  January,  1870,  the  undersigned,  in  accord- 
ance with  the  act  of  Congress  approved  the  eighth  day  of  July,  1870,  en- 
titled "An  act  to  revise,  consolidate,  and  amend  the  statutes  relating  to 


DISCLAIMER. 


609 


patents  and  copyrights,"  did,  on  this  twelfth  day  of  October,  1870,  decide 
that  said  patent  ought  to  be  extended : 

Now,  therefore,  I,  Samuel  S.  Fisher,  Commissioner  of  Patents,  by  virtue 
of  the  power  vested  in  me  by  said  act  of  Congress,  do  renew  and  extend 
the  said  patent,  and  certify  that  the  same  is  hereby  extended  for  the  term 
of  seven  years  from  and  after  the  expiration  of  the  first  term,  viz,  from  the 
fifth  day  of  December,  1868,  which  certificate  being  duly  entered  of  record 
in  the  Patent  Office,  the  said  patent  has  now  the  same  effect  in  law  as 
though  the  same  had  been  originally  granted  for  the  term  of  twenty-one 
years. 

In  testimony  whereof  I  have  caused  the  seal  of  the  Patent  Office  to'  be 
r  _      -I  hereunto  affixed  this  fourth  day  of  December,  1868,  and  of  the  inde- 
pendence of  the  United  States  the  ninety -third. 

SAM'L  S.  FISHEB,- 

Commissioner 


XXIII,  Disclaimer. 


SEC. 

415.  When  disclaimer  may  be  filed ; 

requisites. 

416.  Action  for  infringement  prior 

to  disclaimer. 

417.  What    should    be  set    forth; 

when  necessary. 


SEC. 

418.  Rights  of  grantees. 

419.  Owner  of  sectional  interest  may 

disclaim. 

420.  Delay  in  filing. 

421.  Effect  of  disclaimer. 

422.  Form  of  disclaimer. 


415.  WHEN  DISCLAIMER  MAY  BE  FILED;  REQUISITES. 
Whenever,  through  inadvertence,  accident,  or  mistake, 
and  without  any  fraudulent  or  deceptive  intention,  a  pat- 
entee has  claimed  more  than  that  of  which  he  was  the 
original  or  first  inventor  or  discoverer,  his  patent  shall  be 
valid  for  all  that  part  which  is  truly  and  justly  his  own, 
provided  the  same  is  a  material  or  substantial  part  of 
the  thing  patented;  and  any  such  patentee,  his  heirs  or 
assigns,  whether  of  the  whole  or  any  sectional  interest 
therein,  mav,  on  payment  of  the  duty  required  by  law, 
51* 


610  PROCEDURE  IN  THE  PATENT  OFFICE. 

make  disclaimer  of  such  parts  of  the  thing  patented  as 
he  shall  not  choose  to  claim  or  to  hold  by  virtue  of  the 
patent  or  assignment,  stating  therein  the  extent  of  his 
interest  in  such  patent :  said  disclaimer  shall  be  in  writ- 
ing, attested  by  one  or  more  witnesses,  and  recorded  in 
the  Patent  Office,  and  it  shall  thereafter  be  considered  as 
part  of  the  original  specification  to  the  extent  of  the  in- 
terest possessed  by  the  claimant  and  by  those  claiming 
under  him  after  the  record  thereof.  But  no  such  dis- 
claimer shall  affect  any  action  pending  at  the  time  of  its 
being  filed,  except  so  far  as  may  relate  to  the  question  of 
unreasonable  neglect  or  delay  in  filing  it.  (Act  of  July 
8, 1870,  §  54.) 

416.  ACTIONS  FOR  INFRINGEMENT  PRIOR  TO  DISCLAIMER. 
Whenever,  through  inadvertence,  accident,  or  mistake, 
and  without  any  willful  default  or  intent  to  defraud  or 
mislead  the  public,  a  patentee  shall  have  (in  his  specifi- 
cation) claimed  to  be  the  original  and  first  inventor  or 
discoverer  of  any  material  or  substantial  part  of  the  thing 
patented,  of  which  he  was  not  the  original  and  first  in- 
ventor or  discoverer  as  aforesaid,  every  such  patentee, 
his  executors,  administrators,  and  assigns,  whether  of  the 
whole  or  any  sectional  interest  in  the  patent,  may  main- 
tain a  suit  at  law  or  in  equity  for  the  infringement  of 
any  part  thereof  which  was  bona  fide  his  own,  provided 
it  shall  be  a  material  and  substantial  part  of  the  thing 
patented,  and  be  definitely  distinguishable  from  the  parts 
so  claimed,  without  right  as  aforesaid,  notwithstanding 
the  specification  may  embrace  more  than  that  of  which 
the  patentee  was  the  original  or  first  inventor  or  dis- 
coverer. But  in  every  such  case,  in  which  a  judgment  or 
decree  shall  be  rendered  for  the  plaintiff,  no  costs  shall 


DISCLAIMER.  611 

be  recovered,  unless  the  proper  disclaimer  has  been  en- 
tered at  the  Patent  Office  before  the  commencement  of 
the  suit;  nor  shall  he  be  entitled  to  the  benefits  of  this 
section  if  he  shall  have  unreasonably  neglected  or  delayed 
to  enter  said  disclaimer,  (Ib.,  §  60.) 

417.  WHAT  SHOULD  BE  SET  FORTH;  WHEN  NECESSARY. — 
The  interest  of  the  party  disclaiming  should  be  set  forth ; 
but  where  an  administrator,  in  whose  name  a  patent  had 
been  extended,  entered  a  disclaimer  stating  that  he  was 
the  patentee,  and  referring  to  the  patent  as  showing  his 
interest,  it  was  held  to  be  sufficient,  (  Brooks  v.  Bicknell, 
3  McLean,  439 ;)  and  where  a  patentee  filed  a  disclaimer 
setting  out  that  it  was  "  to  operate  to  the  extent  of  the 
interest  in  said  letters  patent  vested  in  the  patentee,"  it 
was  held  that  it  fairly  enough  imported  on  its  face  that 
the  patentee  was  the  owner  of  the  entire  interest  in  the 
patent,  and  if  so  there  was  a  substantial  compliance  with 
the  statute  as  to  the  statement  of  interest,  (Foote  v.  Silsby, 
1  JBlatchf.,  450;)  and  where  the  party  disclaiming  stated 
that  he  was  the  patentee,  but  said  nothing  in  regard  to  a 
transfer  of  any  part  of  the  patent,  the  fair  presumption  is 
that  he  still  owns  the  whole.  (Silsby  v.  Foote,  14  How., 
221.)  The  law  is  not  penal,  but  remedial ;  it  is  intended 
for  the  protection  of  the  patentee  as  well  as  the  public, 
and  should  not  be  restricted  in  its  operation  within  nar- 
rower limits  than  the  words  of  the  law  fairly  import. 
(O'ReWjj  v.  Morse,  15  How.,  121.) 

A  patentee  may  disclaim  any  thing  which  has  been 
claimed  through  inadvertence  or  mistake,  (Parker  v. 
Sears,  1  Fish.,  93;)  but  a  disclaimer  is  necessary  only  in 
cases  where  the  thing  claimed  wrongfully  is  a  material 
and  substantial  part  of  the  thing  invented.  If  it  is  not 


612  PROCEDURE  IN  THE  PATENT  OFFICE. 

essential  to  the  machine,  and  was  not  introduced  into  the 
patent  through  willful  default  or  intent  to  defraud  or 
mislead  the  public,  the  want  of  a  disclaimer  affords  no 
ground  for  invalidating  the  patent.  (Hall  v.  Wiles,  2 
Jllatchf.,  199.)  But  when  a  patent  is  illegal  in  part,  be- 
cause of  claiming  more  than  the  inventor  has  described, 
or  more  than  he  has  invented,  the  patentee  must  dis- 
claim in  order  to  save  the  portion  to  which  he  is  entitled. 
(O'Reilly  v.  Morse,  15  How.,  121.) 

Inadvertence  and  error  may  occur  as  well  in  a  dis- 
claimer as  a  claim,  (Poppenhausen  v.  Fulke,  2  Fish.,  181,) 
and  a  disclaimer  in  such  a  case  will  not  prevent  the  pat- 
entee from  embracing  the  part  so  disclaimed  in  a  reissue 
of  his  patent.  (Hay den  exparte,  MS.  Appeal  Cases,  D.  C., 
1860.) 

418.  RIGHT  OF  ASSIGNEES. — If  a  disclaimer  is  filed  by 
a  patentee  alone  after  an  assignment  of  a  part  thereof, 
it  will  not  operate  in  favor  of  the  assignee  in  any  suit, 
either  at  law  or  in  equity,  unless  he  has  joined  in  it, 
( Wythe  v.  Stone,  1  Story,  294.)    The  disclaimer  cannot  af- 
fect a  prior  grantee  unless  he  accept  it,  and  he  may  refuse 
to  be  affected  by  it.   (Smith  v.  Mercer,  5  Penn.  Law  Jour., 
581,' Kane,  J.,  Pa.,  1846.) 

419.  OWNER  OF  SECTIONAL  INTEREST  MAY  DISCLAIM. — 
The  owner  of  a  sectional  interest  may  file  a  disclaimer, 
which  will  be  considered  as  a  part  of  the  original  patent 
to  the  extent  of  his  interest,  but  the  patentee  is  not  com- 
pelled to  join  in  such  disclaimer,  nor  will  it  affect  any 
one  except  him  making  it  and   those  claiming  under 
him.     (Potter  v.  Holland,  I  Fish.,  327.) 

420.  EFFECT  OF  DELAY  IN  FILING. — In  every  suit  brought 
upon  a  patent  it  is  a  good  defense,  both  at  law  and  in 


DISCLAIMER.  613 

equity,  that  there  has  been  unreasonable  delay  or  neglect 
to  file  a  disclaimer  where  one  is  necessary.  ( Wythe  v. 
Stone,  1  Story,  295;  Reed  v.  Cutler,  ib.,  600;  Brooks  v. 
Bicknell,  3  McLean,  449;  Hotchkiss  v.  Oliver,  5  Denio,  318 ; 
Parker  v.  Stiles,  5  McLean,  56.) 

What  is  "unreasonable  delay"  in  filing  a  disclaimer  is 
a  mixed  question  of  law  and  fact,  to  be  decided  under  the 
direction  of  the  court.)  Brooks  v.  Bicknell,  3  McLean, 
449.)  It  is  a  question  of  law  for  the  court.  (Seymour  v. 
McCormick,  19  How.,  106;  Singer  v.  Walmsley  — .)  The 
time  in  reference  to  the  question  of  delay  commences 
from  when  knowledge  is  brought  home  to  the  party  that 
he  is  not  the  first  inventor,  or  a  court  of  competent  juris- 
diction has  declared  him  not  to  be  one.  (Singer  v.  Walms- 
ley, — .)  Whether  a  disclaimer  has  been  filed  before  or 
after  the  suit  is  brought,  the  plaintiff  will  not  be  entitled 
to  the  benefit  thereof  if  he  has  unreasonably  neglected 
or  delayed  to  file  it  in  the  Patent  Office.  But  such  an 
unreasonable  neglect  or  delay  will  constitute  a  good  de- 
fense to  the  suit.  (Reed  v.  Cutler,  1  Story,  600.)  The  ques- 
tion of  delay  in  entering  a  disclaimer  goes  to  the  right  of 
action,  and  if  the  jury  are  satisfied  that  there  has  been 
unreasonable  negligence  on  the  part  of  the  patentee  in 
making  a  disclaimer,  then  the  whole  patent  is  inopera- 
tive. (Hall  v.  Wiles,  2  Blatchf.,  198;  McCormick  v.  Sey- 
mour, 3  Blatchf.,  222.) 

421.  EFFECT  OF  DISCLAIMER. — The  disclaimer  men- 
tioned in  §  7  of  the  act  of  1837  (vide  supra,  p.  23,  §  54) 
applies  solely  to  suits  pending  when  the  disclaimer  is 
filed,  and  the  disclaimer  mentioned  in  §  9  of  the  same 
act  (vide  supra, jp.  27,  §  60)  applies  solely  to  suits,  brought 
after  such  disclaimer  is  filed.  ( Wythe  v.  Stone,  1  Story, 
52 


614  PROCEDURE  IN  THE  PATENT  OFFICE. 

294.)  If  filed  before  the  suit  is  brought,  and  the  plaint- 
iff establish  on  trial  that  a  part  of  his  invention  not  dis- 
claimed has  been  infringed,  he  will  be  entitled  to  costs, 
(Reed  v. Cutler,  1  Story,  600;)  but  if  he  omits  to  disclaim, 
and  it  appears  on  trial  that  he  is  entitled  to  be  protected 
in  a  portion  of  his  claims,  but  not  in  respect  to  another 
portion,  he  is  still  entitled  to  damages  for  the  infringe- 
ment of  the  valid  portion,  but  is  not  entitled  to  costs, 
(McCormick  v.  Seymour,  3  Blatchf.,  222;)  and  a  disclaimer 
will  not  affect  any  action  pending  at  the  time  of  filing  it, 
except  in  respect  to  the  question  of  unreasonable  neglect 
or  delay.  (G-uyon  v.  Serrill,  1  Blatchf.,  245.) 

In  the  case  of  Aiken  v.  Dolan  the  complainant  filed  a 
bill  in  equity  to  restrain  the  defendant  from  infringing 
letters  patent  for  "  improvement  in  knitting  needles." 

Mr.  Justice  Cadwalader,  delivering  the  opinion  of  the 
court,  said:  "By  a  proper  disclaimer  of  the  invention 
of  latch  needles  without  any  such  curvature  the  patent 
would,  however,  be  sustainable  for  the  actual  improve- 
ment. The  complainant  proposes,  through  his  counsel, 
to  disclaim  any  construction  of  a  latch  needle  which  has 
not  a  swell,  or  its  equivalent,  substantially  as  shown  in 
the  drawings;  and  to  repeat,  in  the  words  of  the  original 
specification,  that  what  he  claims  as  the  invention  of  the 
patentee  is  the  operation  of  the  latch  or  tongue,  &c.,  oper- 
ated as  therein  described.  The  effect  of  such  a  disclaimer 
will  be  to  deprive  the  complainant  of  all  right  to  recover 
costs  in  the  present  suit.  But  a  court  of  equity  some- 
times considers  that  which  might  and  ought  to  be  done 
as  having  already  been  done.  There  may,  therefore,  be 
a  decree  for  a  perpetual  injunction,  each  party  to  pay 
his  own  costs,  without  any  actual  proof  of  record  in  the 


DISCLAIMER.  615 

Patent  Office.  According  to  the  decision  of  the  Su- 
preme Court  in  O'Reilly  v.  Morse,  (15  How.,  121,)  it  might 
perhaps  be  supposed  that  I  should  go  further,  and,  before 
any  actual  disclaimer,  decree  an  account  or  order  an  issue 
quantum  damnificatus.  But  I  do  not  think  that  a  court 
whose  decision  is  liable  to  reversion,  on  appeal,  should 
in  such  case  make  any  decree  beyond  the  perpetual  in- 
junction without  an  actual  disclaimer,  previously  re- 
corded in  the  Patent  Office.  In  the  present  stage  of  the 
case,  therefore,  I  can  do  no  more  than  award  the  injunc- 
tion with  leave  to  disclaim,  and  afterward  to  move  for 
such  further  order  for  an  account,  &c.,  as  maybe  deemed 
proper."  (3  Fish.,  207.) 

422.  FORM  OF  DISCLAIMER. — 

To  the  Commissioner  of  Patents : 

Your  petitioner,  Ichabod  Willis,  of  St.  Louis,  county  of  St.  Louis,  and 
State  of  Missouri,  represents  that  he  has,  by  grant  duly  recorded  in  the 
United  States  Patent  Office,  (liber  — ,  p.  — ,)  become  the  owner  of  an  ex- 
clusive right  within  and  for  the  several  States  of  Maine,  New  Hampshire, 
and  Vermont,  to  make,  use,  and  vend  to  others  to  be  used,  a  certain  im- 
proved mechanical  movement,  for  which  letters  patent  of  the  United  States 
were  granted  to  Jeremiah  Ingersoll,  of  Albany,  in  the  county  of  Albany 
and  State  of  New  York,  April  1,  1869 ;  that  he  has  reason  to  believe  that, 
through  inadvertence,  accident,  or  mistake,  the  specification  and  claim  of 
said  letters  patent  are  too  broad,  including  that  of  which  said  patentee 
was  not  the  first  inventor.  Your  petitioner,  therefore,  hereby  enters  his 
disclaimer  to  that  part  of  the  claim  in  said  specification  which  is  in  the 
following  words,  to  wit: 

"  I  also  claim  the  sleeves  A  B,  having  each  a  friction  cam  C,  and  con- 
nected, respectively,  by  means  of  chains  or  cords,  K  L  and  M  N,  with  an 
oscillatory  lever,  to  operate  substantially  as  herein  shown  and  described." 

ICHABOD  WILLIS. 

Witness:  HENEY  OAKLAHD. 


616  PROCEDUEE  IN  THE  PATENT  OFFICE. 

XXIV.  The  Patent. 


SEC. 

423.  Issuing,  signing,  and  recording. 

424.  Contents  and  grant. 


SEC. 

425.  Date. 

426.  Form  of  patent. 


423.  ISSUING,  SIGNING,  AND  RECORDING. — All  patents 
shall  be  issued  in  the  name  of  the  United  States  of 
America,  under  the  seal  of  the  Patent  Office,  and  shall 
be  signed  by  the  Secretary  of  the  Interior  and  Cbunter- 
signed  by  the  Commissioner,  and  they  shall  be  recorded, 
together  with  the  specification,  in  said  office,  in  books 
to  be  kept  for  that  purpose.     (Act  of  July  8, 1870,  §  21.) 

424.  CONTENTS  AND  GRANT. — Every  patent  shall  con- 
tain a  short  title  or  description  of  the  invention  or  dis- 
covery, correctly  indicating  its  nature  and  design,  and  a 
grant  to  the  patentee,  his  heirs  or  assigns,  for  the  term 
of  seventeen  years,  of  the  exclusive  right  to  make,  use, 
and  vend  the  said  invention  or  discovery  throughout  the 
United  States  and  the  Territories  thereof,  referring  to 
the  specification  for  the  particulars  thereof;  and  a  copy 
of  said  specifications  and  of  the  drawings  shall  be  annexed 
to  the  patent  and  be  a  part  thereof.     (/6.,  §  22.) 

425.  DATE. — Every  patent  shall  date  as  of  a  day  not 
later  than  six  months  from  the  time  at  which  it  was  passed 
and  allowed  and  notice  thereof  was  sent  to  the  applicant 
or  his  agent;  and  if  the  final  fee  shall  not  be  paid  within 
that  period,  the  patent  shall  be  withheld.     (J6.,  §  23.) 

426.  FORM  OF  PATENT. — 
No. . 

THE   UNITED  STATES  OF  AMERICA. 

To  all  to  whom  these  letters  patent  shall  come  : 

Whereas,   ,  of ,  ,  ha-  alleged  that ha-  in- 
vented a  new  and  useful .  and  ha-  made that a  citizen 


PATENT  OFFICE  FEES.  617 

of  the  United  States ;  that  verily  believes  the  original  and 

first  inventor  or  discoverer  of  the  said ,  and  that  the  same  hath  not 

to knowledge  and  belief  been  previously  known  or  used ; ha-  paid 

into  the   Treasury  of  the  United  States  the  sum  of  dollars,  and 

presented  a  petition  to  the  Commissioner  of  Patents  praying  that  a  patent 
may  be  issued  therefor. 

These  are  therefore  to  grant  to  the  said ,  his  ,  executors, 

administrators,  or  assigns,  for  the  term  of years  from  the day  of 

,  one  thousand  eight  hundred  and ,  the  full  and  exclusive  right 

and  liberty  of  making,  using,  and  vending  to  others  to  be  used,  the  said 

,  a  description  whereof  is  given  in  the  annexed  schedule,  and  made  a 

part  of  these  presents. 

In  testimony  whereof  I  have  caused  these  letters  to  be  made  patent  and 

the  seal  of  the  Patent  Office  to  be  hereunto  affixed.    Given  under 

r  -I  my  hand  at  the  of  city  Washington,  this  day  of  ,  in 

/         the  year  of  our  Lord  one  thousand  eight  hundred  and ,  and 

of  the  independence  of  the  United  States  of  America  the . 

,  Secretary  of  the  Interior. 

,  Commissioner  of  Patents. 

[Countersigned  and  sealed  with 
the  seal  of  the  Patent  Office.] 


XXV.  Patent  Office  Fees. 


SEC. 

427.  All  fees  to  be  paid  in  advance. 

428.  Tariff  of  fees. 

429.  Final  fee  to  be  paid  within  six 

months. 


SEC. 

430.  How  fees  may  be  paid. 

431.  Money  paid  by  mistake. 

432.  Revenue  stamps. 


427.  ALL  FEES  TO  BE  PAID  IN  ADVANCE. — Nearly  all 
the  fees  payable  to  the  Patent  Office  are  positively  re- 
quired by  law  to  be  paid  in  advance,  that  is,  upon  making 
application  for  any  action  by  the  office  for  which  a  fee  is 
payable.  For  the  sake  of  uniformity  and  convenience, 
the  remaining  fees  will  be  required  to  be  paid  in  the 
same  manner.  (Patent  Office  Rules,  July,  1870.) 


618  PROCEDURE  IN  THE  PATENT  OFFICE. 

428.  TARIFF  OF  FEES.— The  following  is  the  tariff  of 
fees  established  by  law : 
On  filing  every  application  for  a  design,  for  three 

years  and  six  months $10  00 

On  filing  every  application  for  a  design,  for  seven 

years 15  00 

On  filing  every  application  for  a  design,  for  four- 

teenyears 30  00 

On  filing  every  caveat ; 10  00 

On  filing  every  application  for  a  patent 15  00 

On  issuing  each  original  patent 20  00 

On  filing  a  disclaimer 10  00 

On  filing  every  application  for  a  reissue 30  00 

On  filing  every  application  for  a  division  of  a 

reissue 30  00 

On  filing  every  application  for  an  extension 50  00 

On  the  grant  of  every  extension 50  00 

On  filing  the  first  appeal  from  a  primary  exam- 
iner to  examiners-iu-chief 10  00 

On  filing  an  appeal  to  the  Commissioner  from 

examiners-in-chief 20  00 

On  depositing  a  trade-mark  for  registration 25  00 

For  every  copy  of  a  patent  or  other  instrument, 

for  every  100  words __  10 

For  every  certified  copy  of  drawing,  the  cost  of 

having  it  made.    ( Vide  supra,  p.  309.) 
For  copies  of  papers  not  certified,  the  cost  of  hav- 
ing them  made. 
For  recording  every  assignment  of  300  words  or 

under 1  00 

For  recording  every  assignment,  if  over  300  and 
not  over  1,000  words - 2  00 


PATENT  OFFICE  FEES.  619 

For  recording  every  assignment,  if  over  1,000 

words-— -— $3  00 

429.  FINAL  FEE  TO  BE  PAID  WITHIN  Six  MONTHS,  (vide 
supra,  p.  343.) — The  final  fee  on  issuing  a  patent  must  be 
paid  within  six  months  after  the  time  at  which  the  pat- 
ent was  allowed  and  notice  thereof  sent  to  the  applicant 
or  his  agent.    And  if  the  final  fee  for  such  patent  be  not 
paid  within  that  time  the  patent  will  be  forfeited,  and 
the  invention  therein  described  become  public  property, 
as  against  the  applicant  therefor,  unless  he  shall  make  a 
new  application  therefor  within  two  years  from  the  date 
of  the  original  allowance.  (Patent  Office  Rules,  July,  1870 ; 
Act  of  JulyS,  1870,  §35.) 

430.  How  FEES  MAY  BE  PAID. — The  money  for  the  pay- 
ment of  fees  may  be  paid  to  the  Commissioner,  or  to  the 
Treasurer,  or  any  of  the  assistant  treasurers  of  the  United 
States,  or  to  any  of  the  designated  depositaries,  national 
banks,  or  receivers  of  public  money,  designated  by  the 
Secretary  of  the  Treasury  for  that  purpose,  who  shall 
give  the  depositor  a  receipt  or  certificate  of  deposit  there- 
for, which  shall  be  transmitted  to  this  office.  When  this 
cannot  be  done  without  much  inconvenience,  the  money 
may  be  remitted  by  mail,  and  in  every  case  the  letter 
should  state  the  exact  amount  inclosed.     Letters  con- 
taining money  may  be  registered.     Post-office  money- 
orders  now  aftbrd  a  safe  and  convenient  mode  of  trans- 
mitting fees.     All  such  orders  should  be  made  payable 
to  the  Commissioner  of  Patents.     (Patent  Office  Rules, 
July,  1870;  Act  of  July  8, 1870,  §  69.) 

All  money  sent  by  mail,  either  to  or  from  the  Patent 
Office,  will  be  at  the  risk  of  the  owner.  In  no  case  should 
money  be  sent  inclosed  with  models.  All  payments  to 


620  PROCEDURE  IN  THE  PATENT  OFFICE. 

or  by  the  office  must  be  paid  in  specie,  treasury  notes, 
national  bank  notes,  certificates  of  deposit,  or  post-office 
money-orders.  (Patent  Office  Rules,  July,  1870.) 

431.  MONEY  PAID  BY  MISTAKE. — Money  paid  by  actual 
mistake  will  be  refunded;  but  a  mere  change  of  purpose 
after  the  payment  of  money  will  not  entitle  a  party  to 
demand  such  return.    (Patent  Office  Rules,  July,  1870 ;  Act 
of  July  S,  1870,  §  70.) 

432.  REVENUE  STAMPS  must  be  attached  as  follows: 
1st.  A  stamp  of  the  value  of  fifty  cents  is  required 

upon  each  power  of  attorney  authorizing  an  attorney  or 
agent  to  transact  business  with  this  office  relative  to  an 
application  for  a  patent,  reissue,  or  extension. 

2d.  No  assignment  directing  a  patent  to  issue  to  an 
assignee  will  be  recognized  by  this  office,  nor  will  any 
assignment  be  recorded,  unless  stamps  shall  be  affixed, 
of  the  value  of  five  cents,  for  every  sheet  or  piece  of  paper 
upon  which  the  same  shall  be  written. 

3d.  The  person  using  or  affixing  the  stamp  must  cancel 
the  same  by  writing  thereupon  the  initials  of  his  name 
and  the  date.  (Patent  Office  Rules,  July,  1870.) 


IV. 

CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

52*  ea 


CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 


I.  Assignments. 


SEO, 
1. 
2. 
3. 
4. 
5. 

6. 


Patent  may  issue  to  assignees. 

Assignments,  &c. 

Interests  conveyed. 

Recording. 

Recording  not  essential  as  be- 
tween the  parties. 

Object  to  protect  bona  fide  pur- 
chasers. 

Assignee. 

Grantee. 

Licensee. 


SEC. 

10.  Assignment  before  patent. 

11.  Effect  and  construction. 

12.  Sale  on  execution. 

13.  Assignees  of  alien  inventors. 

14.  Form  of  assignment  before  pat- 

ent. 

15.  Form  of  assignment  of  patent. 

16.  Form   of  assignment  of  undi- 

vided interest. 

17.  Form  of    exclusive  territorial 

grant. 


1.  PATENT  MAT  ISSUE  TO  ASSIGNEES. — Patents  may  be 
granted  and  issued  or  reissued  to  the  assignee  of  the  in- 
ventor or  discoverer,  the  assignment  thereof  being  first 
entered  of  record  in  the  Patent  Office ;  but  in  such  case 
the  application  for  the  patent  shall  be  made  and  the  speci- 
fication sworn  to  by  the  inventor  or  discoverer ;  and  also, 
if  he  be  living,  in  case  of  an  application  for  reissue.  (Act 
of  July  8,  1870,  §  33.) 

2.  ASSIGNMENTS,  GRANTS,  AND  CONVEYANCES. — Every 
patent,  or  any  interest  therein,  shall  be  assignable  in  law 
by  an  instrument  in  writing;  and  the  patentee,  or  his 
assigns  or  legal  representatives,  may,  in  like  manner, 
grant  and  convey  an  exclusive  right  under  his  patent  to 

623 


624          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

the  whole  or  any  specified  part  of  the  United  States; 
and  said  assignment,  grant,  or  conveyance  shall  be  void 
as  against  any  subsequent  purchaser  or  mortgagee  for  a 
valuable  consideration  without  notice,  unless  it  is  re- 
corded in  the  Patent  Office  within  three  months  from 
the  date  thereof.  (Act  of  July  8,  1870,  §  36.) 

(As  to  right  of  assignee  in  cases  of  reissue,  vide  supra, 
p.  556.  In  cases  of  extension,  p.  603.) 

3.  INTERESTS  WHICH  MAY  BE  CONVEYED. — A  patent  may 
be  assigned,  either  as  to  the  whole  interest  or  any 
undivided  part  thereof,  by  any  instrument  in  writing. 
£To  particular  form  of  words  is  necessary  to  constitute  a 
valid  assignment,  nor  need  the  instrument  be  sealed, 
witnessed,  or  acknowledged;  and  a  patent  will,  upon 
request,  issue  directly  to  the  assignee  or  assignees  of  the 
entire  interest  in  any  invention,  or  to  the  inventor  and  the 
assignee  jointly,  when  an  undivided  part  only  of  the  entire 
interest  has  been  conveyed.  "When  the  patent  is  to  issue 
in  the  name  of  the  assignee,  the  entire  correspondence 
should  be  in  his  name.  The  patentee  may  grant  and 
convey  an  exclusive  right  under  his  patent  to  the  whole 
or  any  specified  portion  of  the  United  States,  by  an  in- 
strument in  writing;  or  he  may  convey  separate  rights 
under  his  patent  to  make  or  to  use  or  to  sell  his  inven- 
tion, or  he  may  convey  territorial  or  shop  rights,  which 
are  not  exclusive.  Such  conveyances  are  mere  licenses, 
and  need  not  be  recorded.  (Patent  Office  Rules,  July, 
1870.) 

What  if  Congress  provides  for  three  kinds  of  assign- 
ments: first,  as  to  the  whole  interest;  second,  as  to  an 
undivided  part;  and,  third,  an  exclusive  right  in  any  dis- 
trict, (Blanehard  v.  Eldridge,  I  Wall,  330;)  but  the  stat- 


ASSIGNMENTS.  625 

ute  renders  the  monopoly  capable  of  subdivision  as  to 
locality,  and  in  no  other  way.  The  patentee  cannot  carve 
out  his  monopoly,  which  is  a  unity,  into  a  hundred  or 
more,  all  acting  in  the  same  place  and  liable  to  come 
into  conflict.  (Ib.;  Whittemorev.  Cutter,!  (raW.,431;  Suy- 
dam  v.  Day,  2  Blatchf.,  23.) 

He  cannot  divide  his  right  into  parts  and  grant  to  one 
man  the  right  to  use  it  in  its  connection  with  or  applica- 
tion to  one  thing,  and  to  another  in  connection  with  a 
different  thing,  to  such  an  extent  as  that  purchasers  from 
any  of  these  persons  may  not  use  the  fabric  exactly  as 
they  like.  (The  Washing- Machine  Company  v.  Earle,  3 
WaO.,—.} 

When  the  patentee  sells  the  right  to  make,  use,  and 
vend  the  invention  in  a  particular  place,  the  purchaser 
buys  a  portion  of  the  franchise  which  the  patent  confers; 
but  the  purchaser  of  a  patented  implement  or  machine 
for  use  in  the  ordinary  pursuits  of  life  stands  on  a  differ- 
ent ground.  By  virtue  of  the  contract  of  sale  and  the 
unconditional  delivery  of  a  patented  article,  it  passes 
outside  the  monopoly,  and  is  no  longer  under  the  pecu- 
liar protection  granted  to  patent  rights,  (Goodyear  v. 
Beverly  Rubber  Company,  1  Clifford,  348;)  and  when  the 
patentee  of  certain  processes  and  the  products  thereof, 
for  a  valuable  consideration,  sold  the  patented  article, 
both  the  manufactured  article  and  the  materials  of  which 
it  was  composed  passed  to  the  purchaser,  discharged  of 
the  peculiar  privileges  secured  by  the  patent,  and  the 
purchaser  may  use  the  material  in  the  manufacture  of 
other  articles  not  themselves  protected  by  the  patent, 
($._)  and  this  although  the  patented  article  was  bought 
of  the  patentee's  licensee,  who  was  restricted  by  the 
53 


626          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

license  to  a  use  of  the  patented  product  different  from 
that  to  which  it  was  devoted  by  the  purchaser,  (ib ;)  hut 
where  a  person  had  purchased  of  the  owner  of  the  inven- 
tion certain  knitting  machines,  with  which  the  vendor 
was  accustomed  to  send  a  package  of  needles  used  in  the 
same,  it  was  held,  that  the  sale  of  the  machines  did  not 
carry  with  it  aright  to  the  purchaser  to  manufacture  new 
needles  of  the  same  construction  as  those  sold,  when 
those  which  he  had  hought  were  worn  out,  although  the 
machines  could  not  be  operated  without  them,  and  the 
needles  were  the  patented  invention  of  the  seller;  the 
needles,  however,  being  the  subject-matter  of  a  different 
patent  from  that  covering  the  machine.  (Aiken  v.  Man* 
Chester  Print  Works,  2  Clifford,  435.) 

The  grant  of  a  machine,  with  the  right  to  use  it,  does 
not  import  the  same  privileges  under  the  patent  as  the 
sale  of  the  right  to  make  and  vend  the  patented  machine, 
'  (ib.)  In  the  latter  case  the  purchaser  buys  a  portion  of  the 
franchise,  and  the  right  he  acquires  necessarily  termi- 
nates at  the  time  limited  for  the  continuance  of  the 
patent;  but  in  the  former,  the  machine  sold  passes  out- 
side the  monopoly,  and  is  no  longer  under  the  protection 
of  the  patent  act,  (ib,)  and  redress  for  injury  in  such  case 
'must  be  sought  in  the  State  courts,  under  State  laws, 
and  not  under  the  special  jurisdiction  conferred  on  the 
Federal  courts  by  the  patent  acts.  (Ibid.) 

4.  RECORDING. — Every  assignment  or  grant  of  an  ex- 
clusive territorial  right  must  be  recorded  in  the  Patent 
Office  within  three  months  from  the  execution  thereof; 
otherwise,  it  will  be  void  as  against  any  subsequent  pur- 
chaser or  mortgagee  for  a  valuable  consideration  without 
notice;  but  if  recorded  after  that  time,  it  will  protect  the 


ASSIGNMENTS.  627 

assignee  or  grantee  against  any  such  subsequent  pur- 
chaser whose  assignment  or  grant  is  not  then  on  record. 
(Patent  Office  Rules,  July,  1870.) 

In  every  case  where  a  patent  issues  or  reissues  to  an 
assignee  the  assignment  must  be  recorded  at  the  Patent 
Office  at  least  five  days  before  the  issue  of  the  patent, 
and  the  specification  must  be  sworn  to  by  the  inventor. 
(76.) 

No  assignment  directing  a  patent  to  issue  to  an  as- 
signee will  be  recognized  by  the  office,  nor  will  any 
assignment  be  recorded,  unless  stamps  shall  be  affixed 
of  the  value  of  five  cents  for  every  sheet  or  piece  of  paper 
upon  which  the  same  shall  be  written. 

The  person  using  or  affixing  the  stamp  must  cancel 
the  same  by  writing  thereupon  the  initials  of  his  name 
and  the  date.  (2b.) 

The  receipt  of  assignments  is  not  generally  acknowl- 
edged by  the  office.  They  will  be  recorded  in  their 
turn  within  a  few  days  after  their  reception,  and  then 
transmitted  to  the  persons  entitled  to  them.  (Ib.) 

Three  cases  of  the  recording  of  assignments  are  pro- 
vided for  by  the  statute:  first,  an  assignment  of  the 
whole  patent;  second,  an  assignment  of  an  undivided 
part  thereof;  and,  third,  a  grant  or  conveyance  of  an 
exclusive  right  under  the  patent  within  any  specified 
part  or  portion  of  the  United  States.  A  grant  of  right, 
not  being  exclusive,  need  not  be  recorded.  (Brooks  v. 
Byam,  2  Story,  542.) 

5.  RECORDING  NOT  ESSENTIAL  AS  BETWEEN  THE  PAR- 
TIES.— To  render  an  assignment  valid  under  §  36  of 
the  act  of  1870,  as  between  the  parties  and  against  strangers, 
it  is  not  essential  that  it  should  be  recorded.  (McKeman 


628          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS 

v.  Site,  6  Ind.,  430 ;  Case  v.  Eedfield,  4  McLean,  527.) 
The  provision  of  the  statute  as  to  the  recording  of  assign- 
ments within  three  months  is  merely  directory,  and,  ex- 
cept as  to  intermediate  bona  fide  purchasers  without 
notice,  any  subsequent  recording  of  an  assignment  will 
be  sufficient  to  pass  title  to  the  assignee.  (Brooks  v. 
Byam,  2  Story,  524 ;  Boyd  v.  Me  Alpine,  3  McLean,  424 ; 
Peck  v.  Bacon,  18  Conn.,  388 ;  Olcott  v.  Hawkins,  2  Amer. 
Law  Jour.,  319;  Hildreth  v.  Turner,  17  III,  185.)  The 
recording  is  not  a  prerequisite  indispensable  to  the  valid- 
ity of  the  assignment.  (Pitts  v.  Whitman,  2  Story,  615, 
618.)  It  is  not  necessary  to  make  the  transfer  operative, 
but  only  essential  to  enable  the  assignee  to  sue  in  his 
own  name,  (Blanchard's  Gun- Stock  Turning  Company  v. 
Warren,  1  Blatchf.,  271 ;)  and  it  is  immaterial  whether 
the  assignment  is  recorded  before  or  not  till  after  suit 
brought.  It  is  the  common  case  of  a  deed  required  to 
be  registered,  where  it  is  sufficient  if  it  be  registered 
before  the  trial,  though  after  the  suit  is  brought.  (lb.} 

6.  OBJECT  OF  RECORDING  TO  PROTECT  BONA  FIDE  PUR- 
CHASERS.— The  chief  object  of  the  requiring  assign- 
ments to  be  recorded  is  manifestly  the  protection  of 
bona  fide  purchasers,  though  not  especially  so  declared. 
(Gibson  v.  Cooke,  2  Blatchf.,  148.)  After  the  expiration 
of  three  months,  if  no  record  has  been  made  of  an  assign- 
ment, and  another  assignment  of  the  same  right  is  made 
and  recorded,  the  last  assignment  would  be  valid.  (Boyd 
v.  McAlpine,  3  McLean,  429.)  To  guard  against  an  out- 
standing title  of  over  three  months'  duration,  the  pur- 
chaser need  only  look  to  the  records  of  the  Patent  Office; 
within  that  period  he  must  protect  himself  as  best  he 
can,  as  an  unrecorded  assignment  would  prevail ;  but  ix 


ASSIGNMENTS.  629 

must  be  an  assignment  in  writing,  that  may  be  recorded 
within  the  time  limited.    (Gibson  v.  Cooke,  2  Blatchf.,  148.) 

7.  ASSIGNEE. — An   assignee  is   one  who   has  trans- 
ferred to  him  in  writing  the  whole  interest  of  the  orig- 
inal patent,  or  an  undivided  part  of  such  whole  interest, 
in  every  portion  of  the  United  States.     And  no    one, 
unless  he  has  such  an  interest  transferred  to  him,  is  an 
assignee.     (Potter  v.  Holland,  1  Fish,  327.) 

8.  GRANTEE. — A  grantee  is  one  who  has  transferred 
to  him  in  writing  the  exclusive  right,  under  the  patent, 
to  make  and  use,  and  to  grant  to  others  to  make  and  use, 
the  thing  patented,  within  and  throughout  some  specified 
part  or  portion  of  the  United  States.     Such  right  must 
be  an  exclusive  sectional  right,  excluding  the  patentee 
therefrom.     (lb.} 

9.  LICENSEE. — A  licensee  is  one  who  has  transferred 
to  him  in  writing  or  orally  a  less  or  different  interest 
than  either  the  interest  in  the  whole  patent,  or  an  undi- 
vided part  of  such  whole  interest,  or  an  exclusive  sec- 
tional interest.     (-H>.) 

10.  ASSIGNMENT  BEFORE  PATENT,  (vide  supra,  p.  274,  et 
seg.) — An  assignment  of  a  patent  may  be  made  as  well 
before  the  issuing  of  a  patent  as  afterward.     The  thing 
to  be  assigned  is  not  the  mere  parchment,  but  the  mo- 
nopoly confert-ed — the  right  of  property  which  it  creates; 
and  when  the  party  has  acquired  an  inchoate  right,  an 
assignment  of  it  is  legal,  (Gayler  v.  Wilder,  10  How.,  477, 
493;)  and  an  invention  may  as  well  be  sold  before  as 
after  the  application  for  a  patent.     (Rathbone  v.  Orr,  6 
McLean,  132.)     After  the  patent  has  been   issued  no 
new  assignment  is  necessary;   the  legal  right  to   the 
monopoly  and  the  property  it  created  ie  vested    by 

53* 


630          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

operation  of  the  assignment  in  the  assignee.  So  held 
when  the  assignment  had  been  recorded  before  the 
patent  issued.  (Ib.)  An  assignment  of  an  invention 
is  not  void  by  being  executed  before  the  invention 
is  patented.  It  is  a  good  transfer  of  the  right  of  the 
patentee  immediately  upon  his  obtaining  the  patent, 
and  he  would  be  estopped  from  setting  up  any  ad- 
verse title.  (Herbert  v.  Adams,  4  Mason,  15.)  An  in- 
ventor may  sell  his  invention  before  he  obtains  a  pat- 
ent; and  after  the  patent  has  been  obtained,  the  con- 
tract will  secure  to  the  assignee  the  extent  of  his  right. 
The  provision  of  law  which  requires  the  application  for 
a  patent  to  be  made  in  the  name  of  the  inventor  becomes 
necessarily  a  part  of  the  contract ;  the  inventor  sells  his 
right,  and  obligates  himself  to  obtain  a  patent.  (Rath- 
bone  v.  Orr,  5  McLean,  131;  and  see  Rich  v.  Lippincott, 
26  Jour.  Frank.  Inst.,  3d  s.,  13.)  An  inventor  may  sell 
future  improvements  as  well  as  those  alread}7  made,  and 
a  second  as  well  as  a  first  patent  for  them.  (Nesmith  v. 
Calvert,  1  Wood.  $•  Minot,  34.)  It  is  not  proper  to  grant 
a  patent  on  a  joint  invention  to  one  of  two  inventors 
upon  the  assignment  of  the  other;  but  all  who  are  con- 
cerned in  the  invention  should  join  in  the  petition.  (2 
Opinions  Attorneys  General,  571.)  Patents  for  inventions 
cannot,  under  §  6  of  the  act  of  1837,  issue  jointly  to  the 
inventor  as  such  and  to  the  assignee  of  a  partial  interest, 
but  may  issue  to  the  assignee  or  assignees  of  the  whole 
interest.  (4  Ib.,  401.)  When  a  transfer  or  assignment 
of  an  inventor's  right  is  only  partial,  although  the  part 
excepted  be  very  small,  the  assignee  has  no  legal  claim 
to  have  the  patent  issue  in  his  name.  It  should  issue  in 
the  name  of  the  inventor.  (9  Ib.,  403.) 


ASSIGNMENTS.  631 

11.  EFFECT  OF  ASSIGNMENT. — An  assignment  of  an 
exclusive  right  to  make,  use,  and  vend  to  others  a  pat- 
ented machine,  within  a  certain  territory  only,  does  not 
prohibit  the  assignee  from  selling  elsewhere,  out  of  the 
said  territory,  the  products  of  such  machines.  The  re- 
striction in  the  assignment  applies  solely  to  the  using  of 
the  machine,  and  is  no  restriction  as  to  place  of  the  sale 
of  the  product.  (Simpson  v.  Wilson,  4  How.,  709.)  An 
agreement  between  a  patentee  and  a  third  person,  as 
trustee,  that  the  latter  should  hold  the  patent  and  have 
the  control  thereof  for  the  benefit  of  those  who  had  a 
right  to  use  the  same,  under  contracts  with  the  patentee, 
transfers  the  entire  interest  and  ownership,  legal  and 
equitable,  of  the  patentee  in  the  patent  to  such  trustee, 
for  the  benefit  of  those  interested.  (Hartshorn  v.  Day, 
19  How.,  211.)  An  assignment  of  the  revenues  of  a  rail- 
road, by  the  company,  to  a  preferred  creditor,  and  the 
use  of  the  rolling  stock,  is  not  a  transfer  of  corporate 
entity  or  property ;  and  the  use,  by  the  assignee,  of  cars 
to  which  patented  brakes  were  attached,  does  not  render 
him  liable  to  account  for  infringement  upon  the  patent 
right,  the  exclusive  use  of  the  brakes  having  previously 
been  licensed  to  the  company  by  the  patentee.  The  as- 
signee used  the  brakes  as  an  agent  and  not  as  a  pur- 
chaser; such  use,  in  the  name  of  the  company,  being  ex- 
clusive, in  the  meaning  of  the  license.  (Emigh  v.  Cham- 
berlain, 1  Am.  Law.  Reg.,  n.  s.,  207;  S.  C.,  2  Fish.,  192.) 
A  particular  agreement  allowing  the  use  of  a  patent  right 
held  a  mere  license,  and  not  an  assignment  conveying 
an  interest  in  the  patent.  (Armstrong  v.  Hanknbech,  3  N. 
Y.  Leg.  Obs.,  43.)  An  assignment  of  the  whole  or  any 
part  of  an  interest  in  a  patent  will  be  valid,  although  it  is 


682          CONTEACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

at  the  time  the  subject  of  litigation,  (Gayv.  Cornell,  1 
Match/.,  510,)  but  a  paper  purporting  to  be  the  assign- 
ment of  an  expired  patent  is  void  as  an  assignment.  (Sell 
v.  McCullough,  1  Fish.,  380.) 

Mere  circumstantial  differences  between  a  description 
of  the  patent  in  the  specification  and  in  an  assignment 
will  not  render  the  assignment  invalid,  (Holden  v.  Curtis, 
2  N.  Hamp.,  63,)  nor  do  they  indicate  fraud  or  prevent 
the  right  from  passing.  (Casev.Mowry,  1  N.  Hamp., 
349.)  An  assignment  may  be  exclusive,  although  limited 
to  a  certain  number  of  machines,  ( Washburn  v.  Gould,  3 
Story,  131;)  such  limitation  is  not  inconsistent  with  the 
grant  of  an  exclusive  territorial  right.  (lb.,  167.)  The 
term  exclusive  comprehends  not  only  an  exclusive  right 
to  a  whole  patent,  but  the  exclusive  right  to  a  patent  in 
a  particular  section  of  country.  (Ib.,  131.)  If  an  assign- 
ment contains  no  warranty,  the  vendee  cannot  set  up  a 
parol  warranty,  for  it  is  presumed  that  the  writing  con- 
tains the  entire  contract,  (Jolliffe  v.  Collins,  21  Mo.,  341,) 
unless  it  is  also  alleged  that  the  warranty  was  false  and 
fraudulent,  and  then  parol  proof  is  only  evidence  of  such 
representation.  (Me  Clure  v.  Jeffrey,  8  2nd. ,  83.)  The  con- 
veyance of  a  patent  by  A,  with  the  written  consent  of 
B,  in  whom  the  title  then  was,  is  equally  effective  with 
a  conveyance  directly  from  B.  (Sherman  v.  Champlain 
Transportation  Company,  31  Vt.,  175.) 

12.  SALE  ON  EXECUTION. — A  patented  machine,  and 
the  right  of  use  attached  to  it,  may  pass  by  sale,  devise, 
or  levy  of  execution,  or  assignment  of  any  insolvent's 
effects.  (  Woodworth  v.  Curtis,  2  Wood.  £  Minot,  524.)  The 
sale  of  a  patented  machine  by  a  sheriff,  under  an  execu- 
tion, does  not,  in  and  of  itself,  convey  to  the  purchaser 


ASSIGNMENTS.  633 

any  right  to  use  the  machine  in  the  manner  pointed  out 
in  the  patent  right.  The  purchaser  acts  at  his  own  peril. 
(Sawin  v.  Guild,  1  Gall.,  485.) 

13.  ASSIGNEES  OF  ALIEN  INVENTORS  take  and  hold  the 
patent,  which  may  be  issued  to  them  with  all  the  privi- 
leges belonging  to  American  patentees.     The  clause  in 
§  15  of  the  act  of  1836,  (5  Stats,  at  Large,  123,)  requiring 
the  invention  to  be  put  on  sale  in  a  certain  time,  applies 
only  to  alien  patentees.     (Tatham  v.  Lowber,  2  Blatchf., 
49.)  To  the  contrary,  ( Tatham  v.  Loring,  5  N.  Y.  Leg.  Obs., 
207.) 

14.  FORM  OF  ASSIGNMENT  OF  THE  ENTIRE  INTEREST  IN 
AN  INVENTION  BEFORE  THE  ISSUE  OF  LETTERS  PATENT. — 

In  consideration  of  $1,  to  me  paid  by  Epbraim  G.  Hall,  of  Cleveland, 
Ohio,  I  do  hereby  sell  and  assign  to  said  Ephraim  G.  Hall  all  my  right, 
title,  and  interest  in  and  to  a  certain  invention  in  plows,  as  fully  set  forth 
and  described  in  the  specification  which  I  have  prepared  [if  the  application 
has  been  already  made,  say  "and  filed"]  preparatory  to  obtaining  letters 
patent  of  the  United  States  therefor.  And  I  do  hereby  authorize  and 
request  the  Commissioner  of  Patents  to  issue  the  said  letters  patent  to  the 
said  Ephraim  G.  Hall,  as  my  assignee,  for  the  sole  use  and  behoof  of  the 
said  Ephraim  G.  Hall  and  his  legal  representatives. 

Witness  my  hand  this  sixteenth  day  of  February,  1868. 
[5-cent  revenue  stamp.]  J.  F.  CROSSETTE. 

15.  FORM  OF  ASSIGNMENT  OF  THE  ENTIRE  INTEREST  IN 
LETTERS  PATENT. — 

In  consideration  of  $500,  to  me  paid  by  Nathan  Wilcox,  of  Keokuk, 
Iowa,  I  do  hereby  sell  and  assign  to  the  said  Nathan  Wilcox  all  my  right, 
title,  and  interest  in  and  to  the  letters  patent  of  the  United  States,  No. 
41,806,  for  an  improvement  in  locomotive  head-lights,  granted  to  me  July 
30,  1864,  the  same  to  be  held  and  enjoyed  by  the  said  Nathan  Wilcox  to 
the  full  end  of  the  term  for  which  said  letters  are  granted,  as  fully  and 
entirely  as  the  same  would  have  been  held  and  enjoyed  by  me  if  this  assign- 
ment and  sale  had  not  been  made. 

Witness  my  hand  this  tenth  day  of  June,  1869. 
[5-cent  revenue  stamp.]  HOBACE  KlMBALL. 


634        CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

16.  FORM  OF  ASSIGNMENT  OF  AN  UNDIVIDED  INTEREST 
IN  THE  LETTERS  PATENT  AND  EXTENSION  THEREOF. — 

In  consideration  of  $1,000,  to  me  paid  by  Obadiah  N.  Bush,  of  Chicago, 
Illinois,  I  do  hereby  sell  and  assign  to  the  said  Obadiah  N.  Bush  one  un- 
divided fourth  part  of  all  my  right,  title,  and  interest  in  and  to  the  letters 
patent  of  the  United  States,  No.  10,485,  for  an  improvement  in  cooking- 
stoves,  granted  to  me  May  16,  1856;  the  same  to  be  held  and  enjoyed  by 
the  said  Obadiah  N.  Bush  to  the  full  end  of  the  term  for  which  said  letters 
patent  are  granted,  and  for  the  term  of  any  extension  thereof,  as  fully  and 
entirely  as  the  same  would  have  been  held  and  enjoyed  by  me  if  this 
assignment  and  sale  had  not  been  made. 

Witness  my  hand  this  seventh  day  of  January,  1869. 

JOHN  C.  MORRIS. 
[5-cent  revenue  stamp.] 

17.  FORM  OF  ASSIGNMENT  OF  EXCLUSIVE  TERRITORIAL 
GRANT  BY  AN  ASSIGNEE. — 

In  consideration  of  $1,000,  to  me  paid  by  William  H.  Dinsmore,  of  Con- 
cord, New  Hampshire,  I  do  hereby  grant  and  convey  to  the  said  William 
H.  Dinsmore  the  exclusive  right  to  make,  use,  and  vend  within  the  State 
of  Wisconsin  and  the  counties  of  Cook  and  Lake,  in  the  State  of  Illinois, 
and  in  no  other  place  or  places,  the  improvement  in  corn  planters  for  which 
letters  patent  of  the  United  States,  dated  August  15, 1867,  were  granted  to 
Leverett  R.  Hull,  and  by  said  Hull  assigned  to  me  December  3,  1867,  by 
an  assignment  duly  recorded  in  liber  X8,  p.  416,  of  the  records  of  the  Pat- 
ent Office,  the  same  to  be  held  and  enjoyed  by  the  said  William  H.  Dins- 
more  as  fully  and  entirely  as  the  same  would  have  been  held  and  enjoyed 
by  me  if  this  grant  had  not  been  made. 

Witness  my  hand  this  nineteenth  day  of  March,  1868. 

ABRAHAM  MOORE. 

[5-cent  revenue  stamp.] 

II.  Licenses  and  Contracts. 


SEC. 

18.  Licenses  need  not  be  recorded. 

19.  Construction  and  effect. 

20.  Assignee  of  license. 

21.  Licenses  for  single  machines. 


SEO. 

22.  Other  contracts. 

23.  Form  of  license,  shop-right. 

24.  Form    of   license  with  a  roy- 

alty. 


18.  LICENSES  NEED  NOT  BE  RECORDED. — The  patentee 


LICENSES  AND  CONTRACTS.  6J5 

may  convey  separate  rights  under  his  patent  to  make  or 
to  use  or  to  sell  his  invention,  or  he  may  convey  territo- 
rial or  shop  rights  which  are  not  exclusive.  Such  con- 
veyances are  mere  licenses,  and  need  not  he  recorded. 
(Patent  Office  .Rules,  July,  1870.) 

A  conveyance  transferring  a  less  or  different  interest  in 
the  patent  than  either  the  interest  in  the  whole  patent, 
or  an  undivided  part  of  such  whole  interest,  or  an  exclu- 
sive sectional  interest,  is  a  mere  license,  and  need  not 
be  recorded.  (Potter  v.  Holland,  1  Fish.,  327;  see  also 
Stevens  v.  Head,  9  Vt.,  177;  Brooks  v.  Byam,  2  Story, 
541.) 

19.  CONSTRUCTION  AND  EFFECT  OF  LICENSE. — A  con- 
tract of  license  is  like  every  other  contract,  and  depends 
upon  a  fair  construction  of  the  acts  of  the  parties.  (Bell 
v.  McCullough,  1  Fish.,  380.)  As  to  the  principles  upon 
which  a  license  to  manufacture  under  a  patent  should 
be  construed,  and  their  application  to  a  license  in 
particular  cases,  see  Washbur?i  v.  Gould,  3  Story  C.  C., 
122;  8.  C.,  I  West.  Law  Jour.,  465;  7  Law  Rep.,  276; 
Day  v.  Gary,  1  Fish.,  424;  Day  v.  Stellman,  ib.,  487.  H 
assigned  to  M,  A  &  Co.  all  his  right  and  interest  un- 
der his  patent  in  twenty-three  counties  in  Ohio,  includ- 
ing that  in  which  the  defendants'  manufactory  was  car- 
ried on.  M,  A  &  Co.  were  to  pay  ten  dollars  for  each 
machine  made  and  sold  by  them,  while  H  reserved  the 
right  of  sending  machines  of  his  own  manufacture  into 
the  territory  named  in  the  contract.  Held,  that  this 
paper  was  not  an  assignment  of  the  interest  of  H  in  the 
patent  within  the  territory  named,  but  a  mere  license. 
(Husseyv.Whitely,  2  Fish.,  120;  see  also  Potts  v.  Jameson, 
15  Barb.,  315.)  A  license  to  use  vulcanized  india-rubber 


CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

for  coating  cloths,  for  the  purpose  of  japanning,  mar- 
bling, and  variegated  japanning,  is  limited  to  the  particu- 
lar kinds  of  goods  mentioned,  and  conveys  no  right  to 
use  the  rubber  for  coating  cloths  for  any  other  purpose, 
(Goodyear  v.  Providence  Rubber  Company,  2  Fish., 499;)  but 
the  public  cannot  be  compelled  to  notice  or  regard  agree- 
ments between  the  patentee  and  his  .licensee  as  to  the 
limitation  of  the  use  of  articles  made  by  them.  (Metro- 
politan Washing-Machine  Company  v.  Earle,  2  Fish.,  203.) 
The  purchase  of  a  license  forms  no  bond  of  allegiance  to 
the  patentee  or  an  estoppel  to  the  licensee  from  averring 
or  proving  any  defense  in  an  action  for  the  infringement 
of  the  patent  which  any  other  person  might  use,  (Burr 
v.  Duryee,  2  Fish.,  275;)  but  when  the  defendants  were 
licensees  of  the  plaintiff,  and  stamped  every  article  made 
with  the  name  and  date  of  the  patent,  the  act  was  a  public 
acknowledgment  that  the  articles  were  made  under  the 
patent,  notwithstanding  their  protest  that  it  should  not 
be  so  considered.  (Jones  v.  Vankirk,  2  Fish.,  586.)  A  cove- 
nant between  a  patentee  and  his  licensees  that  they  will 
not  manufacture  certain  articles  may  be  valid  as  between 
the  parties,  but  it  does  not  run  with  the  article  manufac- 
tured like  a  covenant  as  to  land.  Such  a  contrivance  to 
destroy  competition  may  be  valid,  but  the  covenant  binds 
only  the  parties  to  it.  If  a  stranger  purchase  the  product 
from  one  licensed  to  use  the  process,  he  need  look  no 
further,  and  may  use  it  for  his  own  purposes,  without 
inquiring  for  or  regarding  any  private  agreement  of 
licensees  not  to  compete  with  one  another.  (Metropolitan 
Washing -Machine  Company  v.  Earle,  2  Fish.,  203.)  Where 
a  railroad  fifty-eight  miles  long,  having  a  license  to  use 
a  patented  improvement,  subsequently  acquired  by  con- 


LICENSES  AND  CONTRACTS.  637 

solidation  and  change  of  name  two  hundred  and  ten 
miles  more,  held,  that  the  license  did  not  extend  to 
or  protect  the  newly  acquired  portion.  (Emigh  v.  Chi- 
cago, £c.,  Railroad  Company,  2  Fish.,  387.)  Where  a  per- 
son agreed  with  a  patentee  to  pay  him  a  certain  sum 
on  every  patented  article  manufactured  by  him,  the 
patentee  brought  his  action  for  money  had  and  received, 
it  was  held  that  the  j  ury  might  infer  the  receipt  of  money 
from  the  fact  of  the  sale  of  the  article,  and  that  judgment 
should  be  rendered  for  the  plaintiff  as  upon  an  executed 
contract.  (Stanley  v.  ~Whipple,  2  McLean,  35.) 

20.  ASSIGNEE  OF  LICENSE. — A  license  to  use  a  pat- 
ented machine  may  be  assigned,  it  not  being  a  mere 
personal  privilege,  ( Woodworth  v.  Curtis,  2  Wood.  $  Minot, 
527;  Wilson  v.  Stolley,  5  McLean,  2;)  but  a  mere  license 
to  a  party,  without  having  his   assigns,  or  equivalent 
words  to  them,  showing  that  it  was  meant  to  be  assigna- 
ble, is  only  a  grant  of  a  personal  power  to  the  licensee, 
and  is  not  transferable  by  him  to  another.     ( Troy  Iron 
and  Nail  Factory  v.  Corning,  14  How.,  216.)   Where  D  had 
an  exclusive  license  to  use  the  patent  of  G  for  a  particular 
purpose,  covenanting  not  to  use  it  for  other  purposes, 
and  to  pay  a  specified  tariff  for  such  use,  and  C  took  an 
assignment  of  such  license,  it  was  held,  that  C  took  the 
license  subject  to  the  obligation  to  pay  the  specified  tariff 
on  what  he  should  make  under  it.     (Goodyear  v.  Congress 
Rubber  Company,  3  Blatchf.,  449.) 

21.  LICENSE    RELATIVE  TO   SINGLE    MACHINES. — The 
limitation  of  the  number  of  machines  to  be  made  or  used 
under  a  patent  is  not  inconsistent  with  the  grant  of  an 
exclusive   right  in    the   patent  within   such   territory. 
( Washburn  v,  Gould,  3  Story,  162.)    Where  one  licensedi 

54 


638    CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

to  run  a  patented  machine  sells  such  machine,  the 
license  to  run  does  not  necessarily  pass  with  the  ma- 
chine. (  Wilson  v.  Stolley,  4  McLean,  275.)  The  right  of 
a  licensee  to  use  a  patented  machine  may  be  assigns1 
to  a  third  person.  A  machine  and  the  right  to  use  it  is 
personal  property  rather  than  a  mere  patent  right,  and 
has  all  the  incidents  of  personal  property,  making  it 
subject  to  pass  by  sale.  (Woodworth  v.  Curtis,  2 Wood,  g 
Mmot,  524.)  The  right  to  use  a  machine,  to  be  con- 
structed according  to  a  certain  specification,  involves  the 
right  to  make  or  cause  to  be  made  the  machine  thus  per- 
mitted to  be  used.  (/&.)  A  right  or  license  to  use  one 
machine  during  the  term  of  the  patent  does  not  mean 
any  particular  machine  then  sold,  but  has  reference  to 
what  must  be  considered,  therefore,  one  machine  in 
number  at  one  time.  A  second  machine  may  be  run 
if  the  first  one  wears  out,  or  is  destroyed  by  fire,  or  is 
constructed  erroneously,  or  is  disused  entirely  for  want 
of  repair.  (Ib.;  Wilson  v.  Stolley,  4  McLean,  275.)  The 
right  to  construct  a  patented  machine  is  distinct  from  the 
right  to  use  it,  the  latter  necessarily  implying  the  right 
to  repair,  and  also  to  purchase,  when  the  one  in  use 
is  worn  out  or  destroyed.  (Bieknell  v.  Todd,  5  McLean, 
236.)  Where  the'  only  right  to  use  a  patent  was  one 
which  resulted  from  the  purchase  of  a  machiae,  such 
right  is  coextensive  with  the  existence  of  the  machine, 
and  expires  with  it.  (Day  v.  Union  Rubber  Company,  3 
Blatchf.,  488.)  A  grant  of  a  right  by  a  patentee  to  make 
and  use  a  patented  machine  within  a  term  for  which  it 
has  been  granted  will  give  the  purchaser  of  machines 
from  such  grantee  the  right  to  use  the  machine  patented 
as  long  as  the  machine  itself  lasts ;  nor  will  this  right  to 


LICENSES  AND  CONTRACTS.  639 

use  a  machine  cease  because  an  extension  of  the  patent, 
not  provided  for  when  the  patentee  made  his  grant,  has 
since  been  allowed,  and  the  machine  sold  has  lasted  and 
is  used  by  the  purchaser  within  the  term  of  time  covered 
by  this  extension.  (Bloomer  v.  Millinger,  1  Wall,  340.) 

22.  OTHER  CONTRACTS. — A  party  has  no  authority  to 
grant  licenses  under  a  patent  upon  a  mere  agreement 
with  the  patentee  to  assign  such  patent.  Before  such  a 
party  can  grant  licenses,  the  patent  must  be  actually  as- 
signed. (Day  v.  Hartshorn,  MS.,  21, 1854.)  While  the  ex- 
clusive rights  of  a  patentee  are  specially  guarded  from  in- 
trusion, the  contracts  which  he  makes  to  share  them  with 
third  persons  are  interpreted  and  enforced  in  the  same 
manner  as  other  legal  engagements.  (Morse  v.  0  'Reilly,  6 
Penn.  Law  Jour.,  501 ;  2  Whart.  Dig.,  414.)  Contracts  in 
relation  to  a  patented  machine  or  implement  are  regulated 
by  the  laws  of  the  several  States,  and  are  subject  to  State 
jurisdiction.  (  Wilson  v.  Sandford,  10 How.,  99.)  An  agree- 
ment made  between  B  and  C  and  others,  providing  for 
the  settlement  of  various  matters,  the  discontinuance  of 
certain  suits,  and  also  as  to  the  manufacture  of  a  certain 
article,  as  follows :  "  That  the  said  parties  may  each  here- 
after manufacture  and  vend  spikes  of  sucji  kind  and 
character  as  they  see  fit,  notwithstanding  their  conflicting 
claims  to  this  time,"  must  be  construed  with  reference 
to  the  situations  of  the  parties  to  it.  As  B  claimed  that 
he  had  the  exclusive  right,  under  his  patent,  to  make 
such  spikes,  which  right  the  defendant,  C,  was  infringing, 
but  defendant,  C,  claimed  that  he  did  not  infringe  such 
patent,  but  made  such  spikes  by  an  entirely  different 
method :  held,  that  such  an  agreement  did  not  give  C  a 
license  to  make  such  spikes  after  B's  patent,  but  only  a 


640          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

right  to  make  them  by  the  same  process  or  machinery  he 
had  been  before  using.  (Troy  Iron  and  Nail  Factory  v. 
Corning,  14  How.,  193;  reversing,  S.  C.,  1  Blatchf.,  467.) 
Where  a  patentee  granted  to  V  the  exclusive  right  to 
construct  and  use  and  vend,  within  a  certain  territory, 
ten  planing,  tongueing,  and  grooving  machines,  and  the 
grant  declared  that  V  was  to  enjoy  an  exclusive  use  of 
the  patent  within  said  territory,  limited  to  said  ten  ma- 
chines, and  afterward  the  patentee  granted  to  K  the 
exclusive  right  under  the  patent  of  making,  using,  and 
vending  within  the  same  territory  molding  planing  ma- 
chines: held,  that  the  grant  first  made  to  V  conveyed 
the  entire  interest  of  the  patentee,  and  that  the  subse- 
quent grant  to  K  was  void.  (Sitter  v.  Serrell,  2  Blatchf., 
379.)  To  an  action  of  covenant  upon  an  agreement, 
which  granted  a  license  to  make  arid  vend  a  patented 
article,  the  licensee  agreeing  to  keep  an  account  of  the 
articles  manufactured  and  to  pay  a  fixed  price  per  pound 
on  those  sold,  it  is  no  defense  that  the  patent  is  invalid. 
( Wilder  v.  Adams,  2  Wood.  £  Minot,  329.) 

23.  LICENSE;  SHOP-RIGHT. — 

In  consideration  of  $50,  to  be  paid  by  the  firm  of  Simpson,  Jenks  &  Co,, 
of  Huntsville,  Alabama,  I  do  hereby  license  and  empower  the  said  Simp- 
son, Jenks  &  Co',  to  manufacture,  at  a  single  foundery  and  machine  shop  in 
said  Huntsville,  and  in  no  other  place  or  places,  the  improvements  in  cotton- 
seed planters,  for  which  letters  patent  of  the  United  States,  No.  71,846,  were 
granted  to  me  November  13, 1868,  and  to  sell  the  machines  so  manufactured 
throughout  the  United  States  to  the  full  end  of  the  term  for  which  said 
letters  patent  are  granted. 

Witness  my  hand  this  22d  day  of  April,  1869. 

JOEL  NOBCEOSS. 
[5-cent  revenue  stamp.] 

24.  LICENSE,  NOT  EXCLUSIVE,  WITH  ROYALTY. — 

This  agreement,  made  this  12th  day  of  September,  1868,  between  Morri- 
son White,  party  of  the  first  part,  and  the  Uniontown  Agricultural  Works, 


LICENSES  AND  CONTRACTS.  €41 

party  of  the  second  part,  witnesseth :  That  whereas  letters  patent  of  the 
United  States  for  an  improvement  in  horse-rakes  were  granted  to  the  party 
of  the  first  part,  dated  October  4,  1867;  and  whereas  the  party  of  the  sec- 
ond part  is  desirous  of  manufacturing  horse-rakes  containing  said  patented 
improvement ;  now,  therefore,  the  parties  have  agreed  as  follows : 

I.  The  party  of  the  first  part  hereby  licenses  and  empowers  the  party 
of  the  second  part  to  manufacture,  subject  to  the  conditions  hereinafter 
named,  at  their  factory  in  Uniontown,  Maryland,  and  in  no  other  place  or 
places,  to  the  end  of  the  term  for  which  said  letters  patent  were  granted, 
horse-rakes  containing  the  patented  improvements,  and  to  sell  the  same 
within  the  United  Slates. 

II.  The  party  of  the  second  part  agrees  to  make  full  and  true  returns  to 
the  party  of  the  first  part,  under  oath,  upon  the  first  days  of  July  and  Jan- 
uary in  each  year,  of  all  horse-rakes  containing  the  patented  improvements 
manufactured  by  them. 

III.  The  party  of  the  second  part  agrees  to  pay  to  the  party  of  the  first 
part  $5,  as  a  license  fee  upon  every  horse-rake  manufactured  by  said  party 
of  the  second  part  containing  the  patented  improvements ;  provided,  that 
if  the  said  fee  be  paid  upon  the  days  provided  herein  tor  semi-annual  re- 
turns, or  within  ten  days  thereafter,  a  discount  of  fifty  per  cent,  shall  be 
made  from  said  fee  for  prompt  payment. 

IV.  Upon  failure  of  the  party  of  the  second  part  to  make  returns,  or  to 
make  payment  of  license  fees,  as  herein  provided,  for  thirty  days  after  the 
days  herein  named,  the  party  of  the  first  part  may  terminate  this  license 
by  serving  a  written  notice  upon  the  party  of  the  second  part ;  but  the 
party  of  the  second  part  shall  not  thereby  be  discharged  from  any  liability 
to  the  party  of  the  first  part  for  any  license  fees  due  at  the  time  of  the  ser- 
vice of  said  notice. 

In  witness  whereof  the  parties  above  named  (the  said  Uniontown  Agri- 
cultural Works,  by  its  president)  have  hereunto  set  their  hands  this  day  and 
year  first  above  written. 

MORRISON  WHITE. 
UNIONTOWN  AGEICULTUBAL  WOEZS, 
By  JABEZ  REYNOLDS,  President. 
[5-cent  revenue  stamp.] 

54* 


642          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 


III.  British  Assignments. 


SEC. 

25.  Assignments  should  be  by  deed. 

26.  Patentee  may  assign  to  himself 

and  others. 

27.  Assignment  before  patent. 

28.  License. 

29.  Form  of  words  required. 


SEC. 

30.  Estoppel. 

31.  Registry. 

32.  Stipulations  and  covenants. 

33.  Form  of  license. 

34.  Form  of  agreement  to  purchase 

share  before  patent. 


25.  ASSIGNMENTS  OR  TRANSFERS  OF  PATENTS  SHOULD 
BE  MADE  BY  DEED;  that  is,  by  a  document  or  instrument 
in  writing,  on  paper  or  parchment,  and  signed  by  the 
parties,  sealed  with  their  seals,  and  formally  "delivered" 
as  their  "act  and  deed,"  like  other  deeds. 

Assignments  should  contain  such  stipulations  and  pro- 
visos as^the  parties  think  desirable;  the}7  are  in  practice 
often  restricted  to  the  disposal  of  a  share  in  the  patent, 
such  as  a  half,  a  third,  a  twentieth  share,  and  so  forth;  but 
unless  the  deed  stipulates  how  the  patent  is  to  be  worked, 
it  seems  difficult  to  say  what  actual  beneficial  interest  is 
thus  conveyed,  because  coproprietorship  in  a  patent  does 
not  seem  to  necessitate  joint  participation  in  profits.  The 
proper  course  in  such  cases  would  appear  to  be  to  place 
the  patent  in  trust,  to  be  worked  by  the  trustee  or  his 
agent  for  the  benefit  of  all  the  creditors,  in  accordance 
with  their  respective  shares. 

26.  PATENTEE  MAY  ASSIGN  TO  HIMSELF  AND  OTHERS. — 
As  since  the  property-law  amendment  act,  22  and  23 
Viet.,  cap.  35,  sec.  21,  the  proprietor  of  personal  prop- 
erty may  assign  to  himself,  or  herself,  and  others,  if  such 
an  arrangement  be  deemed  suitable,  the  patentee  can 
make  an  assignment  in  that  manner,  with  stipulations 


BRITISH  ASSIGNMENTS.  643 

that  he  or  she  is  to  work  the  patent  and  pay  over  to  the 
coproprietors  their  respective  shares  in  the  profits;  or, 
under  an  assignment  made  in  manner  above  stated,  a  re- 
ceiver or  manager  may  be  appointed  to  work  the  patent 
and  pay  over  the  proceeds  to  the  proprietors  according 
to  their  respective  shares.  Sometimes  assignments  are 
clogged  with  a  condition  that  the  patentee  shall  be  em- 
ployed in  carrying  out  the  invention  at  a  stipend  to  be 
paid  by  the  assignees,  and  in  such  cases  there  are  fre- 
quently stipulations  that  the  patentee  shall  give  his  time 
to  the  carrying  out  of  the  invention;  but  according  to 
the  case  of  Stacker  v.  Wedderbum,  1857,  (3  Kay  g  Johnson 
Reports,  393,)  actual  compliance  with  such  a  stipulation 
cannot  be  enforced  by  injunction,  although  it  may  enti- 
tle those  interested  to  damages  for  default.  An  assign- 
ment of  a  patent  may  be  made  by  way  of  mortgage. 
Further,  such  assignment  will  be  good  when  there  is  a 
stipulation  that  upon  the  happening  of  a  stated  event 
the  patent  shall  thereupon  become  and  be  transferred. 
(Cartwright  v.  Amatt,  2  Dalies' 's  Patent  Cases.) 

27.  ASSIGNMENT  BEFORE  PATENT. — It  not  unfrequently 
happens  that  an  inventor  obtains  pecuniary  aid  when 
applying  for  provisional  protection,  and  in  such  case  the 
party  supplying  the  money  wishes  to  have  an  assignment 
of  the  patent  rights.  The  course  then  usually  adopted  is 
to  have  a  memorandum  of  agreement  prepared  and  signed 
by  the  parties,  obliging  the  inventor  to  assign  the  pat- 
ent as  soon  as  it  is  obtained.  For  in  such  a  case  there 
seems  to  be  a  legal  difficulty  in  the  way  of  making  a  pos- 
itive assignment  to  take  effect  upon  the  event  of  the  grant 
of  the  patent  being  made,  because  the  inventor  has  then 
no  potential  position  with  regard  to  the  property  therein, 


644          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

for  it  does  not  depend  on  him  whether  it  ever  will  be 
granted,  but  on  the  volition  of  the  Crown.  There  are, 
however,  several  law  cases  which  imply  that,  although 
in  strict  law  no  proper  assignment  can  be  made  before 
the  patent  is  granted,  yet  if  the  person  assigning  receive 
the  consideration  for  the  contract,  and  afterwards  become 
possessed  of  the  property,  the  court  of  chancery  will  com- 
pel him  to  perform  the  contract;  and  it  appears  that 
chancery  will  enforce  the  specific  performance  of  an 
agreement  by  injunction,  even  where  the  payment  of  the 
purchase-money  is  all  that  is  required.  (Cogent  v.  Gib- 
son, 33  Beavan  Reports,  557, 1864;  Reeve  v.  Whitmore,  12 
Weekly  Reporter,  113.)  But  the  words  must  be  clear 
in  order  to  pass  the  property,  per  Lord  Chancellor 
"Westbury.  (Holroyd  v.  Marshall,  9  Jurist  Reports,  213, 
1863.) 

28.  LICENSE. — A  patentee  may  license  others  to  make, 
use,  exercise,  and  vend  the  said  invention,  still  retaining 
the  property  in  the  patent  to  himself,  even  when  such 
license  may  affect  the  whole  term  of  the  patent  and  the 
whole  extent  of  territory  for  which  it  is  granted.     This 
is  a  sole  and  exclusive  license:  but  licenses  may  be  sole 
and  exclusive  with  regard  to  a  certain  district  or  place, 
or  they  may  be  simple  licenses  to  use,  exercise,  and  vend, 
either  limited  as  to  place  or  district,  or  not,  in  which 
cases  of  simple  licenses  other  licenses  may  be  granted 
to  other  parties,  the  only  effect  of  such  simple  licenses 
being  to  free  the  licenses  from  any  action  or  proceeding 
for  infringement. 

29.  FORM  OF  WORDS  KEQUIRED. — It  is  the  proper  and 
safe  course  to  make  the  license  by  deed,  especially  in  cases 
where  sums  of  money  as  royalty  payments  may  be  stip- 


BRITISH  ASSIGNMENTS.  645 

ulated  to  be  paid,  or  conditions  may  be  imposed  as  to  the 
manner  of  working  under  the  patent. 

There  is  no  particular  form  of  words  required  to  be 
used  in  a  deed  of  license  or  a  deed  of  assignments,  but 
as  regards  any  stipulation  or  agreement  which  it  is  in- 
tended should  have  full  legal  force  and  effect  given  to  it, 
that  should  be  expressly  stated  as  a  "covenant"  between 
the  parties. 

30.  ESTOPPEL. — Moreover,  the  statements  made  in  the 
document  must  be  carefully  considered,  because  they  may 
work  what  is  termed  an  "estoppel;"  that  is,  they  may 
hereafter  stop  the  truth  from  being  brought  before  the 
court,  if  the  truth  is  at  variance  with  what  has  been  dis- 
tinctly averred  by  the  solemn  act  of  executing  the  deed 
containing  the  former  contrary  statements. 

Tliis  is  apparent  from  the  old  cases  of  Oldham  v.  Lay- 
mead,  (cited  3  Term  Reports,  439,)  and  Bowman  v.  Taylor, 
(2  Adolphus  £  Ellis  Reports,  278;)  also  the  modern  case 
of  Smith  v.  Scott  y  (Law  Journal,  vol.  xxviii,  p.  325 ;)  Lowes 
v.  Purser,  (6  Ellis  $  Blackburn  Reports,  p.  930.) 

And  it  is  usually  understood  that  without  a  special 
statement  reserving  the  right  of  the  licensee  or  assignee 
or  purchaser  of  a  patent  to  question  its  validity,  he  can- 
not, after  executing  the  deed,  question  the  validity  of  the 
patent,  so  as  to  recover  back  any  part  of  the  purchase- 
money,  unless,  indeed,  he  can  show  fraud  in  the  trans- 
action; for  he  is  considered  to  have  acknowledged  its 
validity  by  the  deed,  and  to  be  thereby  estopped.  (Noton 
v.  Brooks,  1861,  7  Hurlstone  $•  Norman  Reports,  499.) 

31.  REGISTRY. — The  patent  law  amendment  act,  1852, 
requires  licenses  and  assignments  to  be  registered;  and 
this  is  an  important  point  to  be  attended  to.    And  by  the 


646  CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

same  act,  as  before  stated,  the  register  may  be  altered  in 
certain  cases,  as  there  stated. 

In  Morey's  patent,  1858,  (25  Beavan  Reports,  581,) 
alterations  were  made  in  the  register  by  adding  the  entry 
of  a  non-registered  assignment  made  previously  to  another 
assignment  which  had  been  duly  registered.  In  this  case 
there  was  evident  fraudulent  dealing. 

Re  Green's  patent,  1858,  (24  Beavan  Reports,  145,)  the 
patentee  assigned  the  patent,  which  was  omitted  to  be 
registered,  and  afterwards  he  assigned  to  another  party, 
who  registered  at  once.  The  first  assignee  then  regis- 
tered, and  moved  the  master  of  the  rolls  to  expunge  the 
first  entry,  which  he  ordered  to  be  expunged  with  costs. 

32.  STIPULATIONS  AND  COVENANTS. — Licenses  in  prac- 
tice, whether  sole  and  exclusive  or  otherwise,  are  made 
under  various  circumstances,  imposing  various  condi- 
tions on  the  licensee.  Sometimes  the  payment  of  a  fixed 
sum  is  the  consideration  for  granting  the  license;  more 
often  a  certain  sum  is  paid  by  way  of  premium,  and  a 
percentage  or  royalty  is  to  be  paid  on  all  articles  made 
under  the  patent.  This  royalty  is  not  unfrequently  sim- 
ply a  payment  of  a  fixed  amount  per  machine  or  article, 
or  given  quantity  of  articles.  Stipulations  are  introduced 
as  to  the  keeping  of  accurate  accounts  or  verification  of 
accounts  by  statutory  declaration ;  for  inspection  by  pat- 
entee of  the  books  of  accounts  and  of  the  manufactory 
or  workshops  of  the  licensee;  and  even  the  power  of  dis- 
traint for  non-payment  of  royalties  is  in  some  cases  stip- 
ulated for. 

It  may  be  advisable  that  in  no  case  shall  a  license  be 
granted  without  either  a  premium  at  the  time  of  grant 
or  a  minimum  sum  per  annum  being  reserved  as  pay- 


BRITISH  ASSIGNMENTS.  647 

able,  as  otherwise  the  licensee,  after  having  obtained  the 
license  and  led  the  patentee  to  believe  that  his  patent  has 
been  put  in  working  train,  may  possibly,  from  various 
circumstances,  be  induced  to  refrain  from  any  operations 
under  it,  and  deprive  him  of  the  expected  benefit. 

However,  the  stipulations  and  conditions  of  licenses  and 
assignments  must  be  such  as  the  law  will  give  effect  to. 

It  is  not  unusual  to  introduce  into  licenses  a  condition 
that  the  licensee  shall  not  make  any  machines  or  articles 
of  a  similar  kind  without  the  patent  improvements  being 
applied  thereto;  and  it  has  been  argued  that  this  stipula- 
tion could  not  be  supported  in  law,  as  being  in  restraint 
of  trade. 

In  Jones  v.  Lees,  1868,  (Exchequer  Reports,  new  series, 
vol.  i,  p.  193,)  such  a  covenant  was  upheld,  it  not  being 
a  covenant  for  an  unreasonable  time,  but  only  for  the 
term  of  the  license. 

The  construction  of  the  covenants  in  assignments  and 
licenses  follows  the  usual  rules  of  law  in  construing  deeds, 
as  to  which  the  case  of  Webster  v.  Newsome,  (5  Hurlstone 
$•  Norman,  42,)  may  be  referred  to  by  those  who  wish  to 
enter  into  details  on  that  point. 

In  assignments,  and  perhaps  in  .licenses,  there  may 
probably  be  covenants  to  pay  the  deferred  stamp  duties 
at  the  third  and  seventh  years.  In  the  case  of  Hill  v. 
Mount,  (18  Common  Bench  Reports,  72,)  an  agreement  to 
assign  and  pay  for  letters  patent  was  held  not  to  compel 
the  payment  of  the  third  year's  stamp  duty. 

It  is  sometimes  stipulated  in  licenses  that  the  licensee 
shall  use  his  best  endeavors  to  detect  infringers,  and  that 
the  patentee  shall  prosecute  them;  and  sometimes  the 
licensee  is  left  to  prosecute  them. 


648  CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

According  to  the  case  of  Renard  v.  Levenstein,  1865? 
(Aniline  dye  patent,)  an  exclusive  licensee  has  a  right  to 
use  the  name  of  the  patentee  to  bring  actions  of  infringe- 
ment. 

And  in  Dunnidiff'  £  Bagley  v.  Malleti,  Dunnidiff  $•  Bag- 
ley  v.  Berkin  and  another,  1859,  (7  Common  Bench  Reports, 
new  series,  p.  209,)  an  assignee  of  a  part  of  a  patent  was 
adjudged  to  have  a  right  to  bring  an  action  of  infringe- 
ment without  joining  the  possessors  of  the  other  part  or 
parts. 

It  may  be  remarked  that  both  assignments  and  licenses, 
whether  exclusive  or  otherwise,  may  have  reference  to 
part  of  any  invention  only.  Thus  they  may  refer  to  the 
use  of  the  invention  for  a  certain  class  of  articles,  or  to 
some  parts  of  a  combination,  and  not  to  the  whole,  and 
so  forth. 

Both  assignments  and  licenses  usually  contain  cove- 
nants or  clauses  that  all  differences  between  the  parties 
shall  be  submitted  to  arbitration;  and  a  short  way  of 
doing  this  is  to  provide  that  the  proceedings  for  arbitra- 
tion shall  be  in  accordance  with  the  common-law-proce- 
dure act,  1854,  (17  and  18  Viet,  cap.  125,)  as  that  act  con- 
tains explicit  directions  on  the  subj  ect.  It  is  also  desirable 
that  all  questions  of  the  construction  of  the  wording  of 
the  deeds  should  be  required  to  be  submitted  to  some  par- 
ticular conveyancing  counsel  or  the  conveyancing  counsel 
of  the  court  of  chancery,  either  ultimately  or  primarily. 
In  preliminary  agreements  it  should  always  be  provided 
that  any  further  deed  or  document  that  may  be  deemed 
requisite  shall  be  afterwards  executed,  in  order  to  give 
legal  effect  to  the  transaction  according  to  its  true  intent 
a,n<!  meaning. 


BBITISJI  ASSIGNMENTS.  649 

33.  FORM  OF  LICENSE  TO  USE  A  PATENTED  INVENTION. — 

This  indenture,  made  the day  of ,  between  [grantor]  of,  &c., 

of  the  one  part,  and  [licensee]  of,  &c.,  of  the  other  part:  Whereas  by  let- 
ters patent  dated  the  day  of ,  her  majesty  Queen  Victoria 

granted  unto  [grantor,]  his  executors,  administrators,  or  assigns,  for  the 
term  of  fourteen  years,  the  exclusive  privilege  of  using,  exercising,  and 
vending,  within  the  united  kingdom  of  Great  Britain  and  Ireland,  the 
Channel  Islands  and  Isle  of  Man,  the  invention  of  a  certain  method  of 
weaving :  And  whereas  the  said  [grantor]  hath  become  entitled  to  the  pat- 
ent and  the  benefit  thereof:  And  whereas  the  said  [grantor]  hath  agreed 
with  the  said  [licensee]  to  grant  to  him  a  license  to  use  the  said  invention 
to  the  intent  and  upon  the  terms  herein  expressed:  Now  this  indenture 
witnesseth,  that  in  pursuance  of  the  said  agreement,  and  in  consideration 
of  the  covenants  and  agreements  hereinafter  entered  into  by  the  said  [li- 
censee,] he,  the  said  [grantor,]  doth  grant  unto  the  said  [licensee]  full  license 
and  authority,  within  the  limits  granted  by  the  said  letters  patent,  to  use 
and  exercise  the  said  invention  so  far  as  the  same  relates  to  the  weaving 

or  manufacturing  of  ,  but  not  further  or  otherwise;  and  to  vend  all 

such as  shall  have  been  woven  or  manufactured  by  him  during  the 

continuance  of  this  license  or  agreement,  by  means  of  or  according  to  the 
principle  of  the  said  invention,  for  and  during  the  unexpired  residue  of  the 
term  granted  by  the  said  letters  patent,  if  the  said  [licensee]  should  so  long 
live,  subject  nevertheless  to  the  restrictions  and  provisions  hereinafter  con- 
tained, yielding  and  paying  therefor  unto  the  said  [grantor,]  his  executors, 
administrators,  and  assigns,  at  the  times  and  in  the  manner  hereinafter  ex- 
pressed, the  royalties  or  sums  of  money  hereinafter  by  the  said  [licensee] 
covenanted  to  be  paid:  And  the  said  [licensee]  doth  hereby,  for  himself,  his 
heirs,  executors,  and  administrators,  covenant  with  the  said  [grantor,]  his 
executors,  administrators,  and  assigns,  in  manner  following ;  that  is  to  say : 

1.  That  the  said  [licensee]  shall  pay  to  the  said  [grantor,]  his  executors, 

administrators,  and  assigns,  the  following  rates  and  tributes:  —  for  all • 

woven  or  manufactured  according  to  the  principles  of  the  said  invention, 
in  which  no  silk  shall  be  used,  either  in  warp  or  weft,  for  every  shuttle 
used  and  employed  in  weaving  the  above-mentioned  fabrics,  for  every  week 

of  such  use,  if  the  said  fabric  shall  not  exceed  in  width inches,  the 

sum  of  ;  if  above inches  and  not  exceeding inches, 

the  sum  of ;  and  for  every  additional  inch  in  width  above 

inches,  the  further  sum  of ;  and  so  in  proportion  for  any  less  period 

of  user  than  a  week :  And  for  all  — ; woven  or  manufactured  according 

to  the  principles  of  the  said  invention,  in  which  silk  shall  be  used,  for 
55 


650          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

every  shuttle  used  and  employed  in  weaving  the  above-mentioned  fabrics, 

for  every  week  of  such  user,  if  the  fabric  shall  not  exceed  in  width 

inches,  the  sum  of  ;   if  above  inches  and  not   exceeding 

inches,  the  sum  of ;  and  for  every  additional  inch  in  width 

above inches,  the  further  sum  of ;  and  so  in  proportion  for 

any  less  period  of  user  than  a  week ;  such  payments  to  be  made  on  the  first 
day  of  any  calendar  month  during  the  continuance  of  the  license,  the  first 
payment  to  be  made  on  the  first  day  of  the  month  ensuing  tho  date  hereof, 
provided  that  the  said  [licensee]  shall  in  no  case,  either  in  silk  or  cotton, 
manufacture  any  webs  of  a  greater  width  than inches. 

2.  That  the  said  [licensee]  shall  not  use  or  employ  any  shuttle  in  manu- 
facturing according  to  the  principles  of  the  said  invention  during  the  night, 
but  only  in  the  usual  and  ordinary  hours  of  day  labor,  and  for  not  more 
than hours  in  each  twenty-four  hours. 

3.  That  on  or  before  the  last  day  of  each  calendar  month  during  the  con- 
tinuance of  this  license  the  said  [licensee]  shall,  by  notice  in  writing,  inform 
the  said  [grantor,]  his  executors,  administrators,  or  assigns,  or  his  or  their 
agent  in  that  behalf,  of  the  number  of  shuttles  intended  to  be  used  or  em- 
ployed in  the  ensuing  month  in  the  weaving  of  the  said ,  distin- 
guishing those  to  be  used  for  the  weaving  of  fabrics  in  which  silk  shall  be 
used,  and  of  the  place  or  places  where  such  shuttles  respectively  are  in- 
tended to  be  employed. 

4.  That  in  case,  at  the  expiration  of  any  calendar  month  during  the  con- 
tinuance of  this  license,  the  said  [licensee]  shall  be  desirous  of  increasing 
the  number  of  shuttles  employed  by  him  for  the  purpose  aforesaid,  he  shall, 
previously  to  such  employment,  give  to  the  said  [grantor,]  his  executors, 
administrators,  or  assigns,  or  his  or  their  agent  in  this  behalf,  notice  in 
writing  of  such  intention  and  of  the  place  or  places  where  such  increased 
number  of  shuttles  are  intended  to  be  employed ;  and  that  the  said  [licensee] 
shall  be  deemed  and  taken  to  have  used  and  employed  for  the  purposes 
aforesaid,  from  the  period  of  giving  any  such  notice  or  notices  as  aforesaid 
until  the  expiration  of  the  current  calendar  month  for  the  time  being,  all 
the  shuttles  which  in  any  such  notice  or  notices  as  aforesaid  he  shall  have 
signified  his  intention  to  use  and  employ,  whether  he  shall  in  fact  have  so 
used  or  employed  them  or  not. 

5.  That  the  said  [licensee]  shall,  within  the  first  three  days  of  each  calen- 
dar month  during  the  continuance  of  this  license,  give  unto  the  said  [grant- 
or,] his  executors,  administrators,  or  assigns,  or  his  or  their  agent  in  that 
behalf,  a  statement  in  writing,  signed  by  the  said  [licensee]  or  his  agent,  of 
the  number  of  shuttles  used  and  employed  by  the  said  [licensee]  during  the 


BRITISH  ASSIGNMENTS.  651 

preceding  calendar  month  in  the  weaving  of  the  said ,  distinguish- 
ing those  used  for  the  weaving  fabrics  in  which  silk  shall  be  used,  and  also 
specifying  and  distinguishing  the  widths  manufactured  by  the  eaid  shuttles 
respectively,  and  the  respective  times  during  which  such  shuttles  shall  have 
been  employed. 

G.  That  if  at  any  time  or  times  during  the  continuance  of  this  license  the 

said  [licensee]  shall  use  or  employ  any  shuttles  for  weaving by  means 

of  or  according  to  the  principles  of  the  said  invention,  without  previously 
giving  to  the  said  [grantor,]  his  executors,  administrators,  or  assigns,  or  his 
or  their  agent  in  that  behalf,  such  notice  in  writing  as  is  hereinbefore  agreed 
to  be  given  of  his  intention  to  use  the  same;  or  if  the  said  [licensee]  shall 
at  any  time  during  the  continuance  of  this  license  neglect  or  refuse  to  give 
in  such  notice  as  is  agreed  to  be  given  during  the  first  three  days  of  every 
calendar  month  of  the  shuttles  used  during  the  preceding  month,  then  and 
in  such  case  (and  when  and  so  often  as  the  same  shall  happen)  the  said 
[licensee]  shall,  on  the  first  day  of  the  calendar  month  next  after  such  use 
or  employment  or  neglect  as  aforesaid,  pay  unto  the  said  [grantor,]  his  ex- 
ecutors, administrators,  or  assigns,  the  sum  of  £ for  each  and  every 

shuttle  which  shall  have  been  so  used  or  employed  or  of  which  no  notice 
shall  have  been  given  as  aforesaid,  contrary  to  the  covenant  in  that  behalf 
hereinbefore  contained. 

7.  That  the  said  [licensee]  shall  not,  at  any  time  or  times  during  the  con- 
tinuance of  this  license,  use  or  employ,  or  knowingly  permit  or  suffer  to  be 
used  or  employed,  any  shuttle  whatever  for  weaving  the  said accord- 
ing to  the  principles  of  the  said  invention  in  any  place  or  places  other  than 
such  as  shall  have  been  specified  in  the  notice  in  writing  which  shall  have 
been  given  by  the  said  [licensee]  of  his  intention  in  that  behalf. 

8.  That  if  at  any  time  or  times  during  the  continuance  of  this  license  the 
said  [licensee]  shall  use  or  employ,  or  knowingly  permit  or  suffer  to  be  used 

or  employed,  any  shuttle  for  weaving  the  said  according  to  the 

principles  of  the  said  invention  in  any  place  or  places  other  than  such  as 
shall  have  been  specified  in  such  notice  as  aforesaid,  or  otherwise  contrary 
to  any  of  the  stipulations  herein  contained ;  then  and  in  every  such  case 
the  said  [licensee]  shall,  on  the  first  day  of  the  calendar  month  next  after 
such  use  or  employment,  pay  unto  the  said  [grantor,]  his  executors,  admin- 
istrators, or  assigns,  the  sum  of  £ for  each  and  every  shuttle  which 

shall  have  been  so  used  or  employed  contrary  to  any  of  the  stipulations 
herein  contained. 

9.  That  it  shall  be  lawful  for  the  said  [grantor,]  his  executors,  adminis- 
trators, or  assigns,  and  his  or  their  agent  or  agents,  at  all  seasonable  times 


652         CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

in  the  daytime  during  the  continuance  of  this  license,  to  enter  into  and 
upon  any  factory,  shop,  house,  or  other  place  where  the  said  [licensee]  may 
be  carrying  on  any  manufacture  or  business,  and  then  and  there  to  inspect 
any  shuttles  and  machinery  which  may  be  employed  by  the  said  [licensee] 
in  the  weaving  of  such as  aforesaid,  [or  in  any  other  weaving  proc- 
ess,] and  to  ascertain  the  number  of  shuttles  and  the  width  of  the  fabrics 
woven  therewith. 

10.  That  the  said  [licensee]  shall  purchase  of  and  from  Messrs. , 

,  or  of  such  other  persons  as  the  said  [grantor,]  his  executors,  ad- 
ministrators, and  assigns,  shall  nominate  or  appoint  in  that  behalf,  all  the 

which  the  said  [licensee]  shall  during  the  continuance  of  this  license 

use  or  employ  in  the  manufacture  of  the  said  — — —  fabrics  as  aforesaid, 
they,  the  said , ,  or  such  other  person  or  persons  as  afore- 
said, selling  the  same  to  the  said  [licensee]  at  the  usual  and  accustomed  price 

for  the  time  being  charged  by  them  or  him  for  such ,  and  that  the 

said  [licensee]  shall  not,  without  the  license  and  consent  of  the  said  [grantor,] 
his  executors,  administrators,  and  assigns,  use  or  employ  in  their  shuttles 
any  other  than  the  said so  purchased. 

11.  That  if  the  said  [licensee]  shall,  at  any  time  or  times  during  the  con- 
tinuance of  this  license,  use  or  employ  in  the  manufacture  of  such 

as  aforesaid  any other  than  such  as  shall  be  purchased  by  him  of 

and  from  the  said ,  or  such  other  person  or  persons  as  aforesaid, 

then  and  in  every  such  case  he  the  said  [licensee]  shall,  provided  the  said 

,  or  such  other  person  or  persons  as  aforesaid,  shall  have  been 

willing  to  sell  the  same  to  iiim  at  the  usual  and  accustomed  price,  pay  unto 
the  said  [grantor,]  his  executors,  administrators,  and  assigns,  the  sum  of 

for  each  and  every  pound  weight  of  such which  he,  the  said 

[licensee,]  shall  so  use  as  last  aforesaid. 

12.  That  he,  the  said  [licensee,}  will  not  at  any  time  hereafter  assign  or 
transfer  or  underlet  the  license  hereby  granted,  or  in  any  manner  exercise 
or  permit  the  same  to  be  exercised,  for  the  benefit,  either  wholly  or  in  part, 
of  any  person  or  persons  whomsoever,  as  manufacturer  or  manufacturers, 
other  than  the  said  [licensee,]  and  that  this  license  shall  absolutely  cease 
and  determine  on  the  said  [licensee]  making  any  attempt  so  to  assign  or 
transfer  or  underlet  the  same,  or  becoming  bankrupt,  or  suffering  his  estate 
and  effects  to  be  vested  in  assignees  in  insolvency  or  bankruptcy  or  in  trus- 
tees for  the  benefit  of  creditors. 

13.  That  all  the  sums  of  money  hereinbefore  agreed  to  be  paid  on  breach 
of  any  stipulation  herein  contained  shall  be  the  stipulated  damages  for  such 
breach,  and  not  penalties. 

In  witness,  &c. 


BRITISH  ASSIGNMENTS.  653 

34.  FORM  OF  AGREEMENT  FOR  PURCHASE  OF  A  SHARE  OF 
AN  INVENTION  AND  OF  THE  PATENT  TO  BE  OBTAINED  FOR  THE 
SAME. 

Memorandum  of  an  agreement  indented,  made,  and  entered  into  this 

26th  day  of  December,  1831,  between ,  of ,  in  the  county 

of ,  of  the  one  part,  and ,  of ,  in  the  county  of , 

of  the  other  part: 

Whereas  the  said hath  recently  invented  and  discovered  cer- 
tain improvements  in ,  never  before  known  or  used  in  this  kingdom ; 

And  whereas  the  said intends  forthwith  to  apply  for  her  maj- 
esty's royal  letters  patent,  for  her  special  license  and  authority,  for  him, 

the  said ,  his  executors,  administrators,  and  assigns,  to  make,  use, 

exercise,  and  vend  his  said  invention  for  his  and  their  sole  use  and  benefit 
during  the  term  of  fourteen  years ; 

And  whereas  the  said hath  contracted  with  the  said 

for  the  purchase  of  one-fifth  share  of  and  in  the  said  invention,  and  the 
benefits  thereof,  and  of  the  said  letters  patent,  and  all  improvements  thereof 
applicable  thereto,  and  all  future  letters  patent  in  respect  thereof,  and  ad- 
vantages arising  therefrom,  at  the  sum  of ,  to  be  paid  as  hereinafter 

mentioned : 

Now,  these  presents  witness,  that  the  said agrees  to  sell,  and 

the  said to  purchase,  one  part  or  share  of  and  in  the  said  inven- 
tion, of  and  in  the  said  letters  patent,  and  also  of  and  in  all  improvements 
whatsoever  which  the  said shall,  or  may  hereafter,  make  or  dis- 
cover in  the  said  invention,  and  of  and  in  all  future  letters  patent  (if  any) 

which  he,  the  said ,  shall  or  may  obtain  for  or  in  respect  of  such 

improvements,  and  of  and  in  all  rights,  profits,  or  advantages  whatsoever 
incident  to  the  said  letters  patent,  whether  the  same  shall  arise  from  mak- 
ing or  manufacturing  the  said  improved  •  ,  or  by  the  vending  or  sale 
thereof,  or  of  any  partwthereof,  or  from  the  granting  or  sale  of  any  license 
or  licenses  for  the  using  or  manufacturing  thereof,  or  of  any  part  thereof, 
or  from  the  working  thereof,  or  by  any  other  means  howsoever ;  the  same 

to  be  held  by  the  said ,  together  with  all  powers  and  remedies 

for  recovering  the  moneys  to  arise  as  aforesaid  for  all  the  term  for  which 
the  said  letters  patent  shall  be  granted,  and  for  such  renewedierm  or  terms 
ad  may  hereafter  be  granted  therein : 

And  it  is  hereby  agreed,  that  the  said shall,  and  within 

days  next  after  the  date  of  these  presents,  apply  and  petition  for  the  said 
letters  patent,  and  shall  and  will  follow  up  such  petition  by  all  proceedings 
55* 


654          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

and  means  necessary  and  usual  in  such,  cases,  so  that  the  said  letters  patent 
may  be  obtained  and  the  specification  duly  enrolled  as  soon  as  circum- 
stances will  permit;  the  same  letters  patent  to  be  at  the  costs  and  expenses 
in  all  things  of  the  said ; 

And  that  the  said shall  and  will,  within  •  days  after  the 

said  letters  patent,  or  any  future  letters  patent,  shall  be  granted,  or  at  any 

time  or  times  thereafter,  if  so  required  by  the  said ,  and  at  his 

expense,  by  such  good  and  sufficient  conveyances  and  assurances  in  the 

law  as  the  said or  his  counsel  shall  advise  and  require,  assign 

and  make  over  the  said part  or  share,  as  aforesaid,  unto  the  said 

,  his  executors,  administrators,  or  assigns;  and  shall  and  will,  in 

such  assignment  or  assurance,  enter  into  all  usual  covenants  for  the  quiet 
possession  or  enjoyment  and  further  assurance  of  the  said  share;  and  also 
into  a  covenant  not  to  do,  or  assent  to,  or  cause  to  be  done,  any  act,  deed, 
matter,  or  thing  whatsoever,  whereby  or  in  consequence  of  which  the  said 
letters  patent  shall  or  may  be  forfeited  or  invalidated,  or  the  right  of  the 

said to  his  share  thereof  be  affected  or  incumbered;  and  also 

that  the  business  of  the  said  letters  patent  shall  be  managed  and  conducted 

by  the  said ,  and  that  he  shall  keep  regular  accounts  of  the  same, 

and  that  such  accounts  shall  be  at  all  times  open  to  the  examination  and 

inspection  of  the  said ,  and  that  he  shall  have  full  power  to  make 

copies  of  or  extracts  from  the  same;  and  that  the  said shall  pay 

the  said  sum  of  £ in  manner  hereinafter  mentioned,  viz, ;  and 

that  the  sum  of  £ shall  be  applied  by  the  said in  payment 

of  the  fees  and  expenses  incident  to  obtaining  the  said  letters  patent; 

And  it  is  hereby  further  agreed,  that  in  case  the  said shall 

hereafter  obtain  letters  patent  for ,  then  that  he  will,  if  and  when 

thereunto  requested  by  the  said ,  and  in  consideration  of  the 

further  sum  of  £ ,  to  be  paid  to  him  by  the  said ,  assign  to 

the  said one part  or  share  of  such  last-mentioned  letters 

patent,  and  of  all  benefit  and  advantage  arising  thejefrom; 

And  it  is  lastly  agreed,  that  if  the  said shall  hereafter  be  in- 
clined to  sell  and  dispose  of  any  further  share  or  shares  of  the  said  letters 
patent,  or  either  of  them,  that  he  will,  in  the  first  instance,  offer  the  same 

to  the  said ;  and  the  said agrees  that  he  will  not  in 

any  instance  whatever  sell  and  dispose  thereof,  or  offer  to  sell  and  dispose 

thereof,  to  a  third  person,  before  the  said shall  have  refused  to 

purchase  the  same. 


FRENCH  ASSIGNMENTS,  AC.  655 


IV.  French  Assignments  and  Powers  of  Attorney. 


SEO. 

35.  Legal  formalities. 

36.  Object  and  effect  of  registry. 

37.  Formalities   when    the  assign- 

ment   is    not  drawn  up   in 
France. 


SEC. 

38.  Transfers  by  attorney. 

39.  Number  of  assignees  unlimited. 

40.  Acte  de  cession. 

41.  Acte  unilateral  de  cession. 

42.  Pouvoir 


35.  LEGAL  FORMALITIES. — Patents  may  be  -assigned  by 
the  patentees  themselves,  or  by  persons  acting  in  their 
names  with  regular  powers;  the  assignment  may  be  of 
the  whole  or  only  of  part;  it  may  be  for  the  time  re- 
maining, or  for  a  portion  of  it.  All  deeds  of  assignment 
must  be  made  in  a  particular  manner,  and  according  to 
forms  prescribed  by  the  French  law.  A  notary  public  is 
the  only  person  in  France  qualified  to  draw  up  a  deed  of 
assignment,  which  must  afterwards  be  recorded  in  the 
office  of  the  prefect  of  the  department  in  which  the  par- 
ties reside,  if  they  reside  in  the  same  department,  or  in 
the  office  of  the  prefects  of  their  respective  departments, 
if  they  do  not  reside  in  the  same.  Should  both  the  par- 
ties reside  outside  of  France,  the  recording  may  take 
place  in  Paris,  at  the  prefect's  office. 

Patentees  forfeit  all  their  rights  unless  they  have  paid 
in  due  time  their  annual  patent  fees,  and  no  total  or 
partial  assignment  can  take  place  until  the  entire  patent 
fees  are  paid. 

"No  assignment  is  to  be  registered,  except  on  the  pro- 
duction and  delivery,  1st,  of  the  receipt  of  the  payment 
made  in  due  time  of  the  last  annual  patent  fee,  distinct 
from  the  first  annual  patent  fee;  2d,  of  a  receipt  to  the 
receiver  general  in  the  department  of  the  central  receiver 


656    CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

at  Paris  for  the  entire  payment  of  the  complimentary 
patent  fees ;  and,  3d,  of  an  authentic  abstract  of  the 
deed,  executed  before  a  notary  of  the  department,  and 
establishing  the  total  or  partial  transfer  of  the  patent, 
either  gratuitously  or  for  a  consideration.  The  assign- 
ment, if  regularly  made,  is  registered  in  the  same  man- 
ner as  the  demand  for  the  patent,  and,  provided  the 
forms  above  stated  have  been  regularly  followed  in  the 
drawing  up  of  the  deed  of  assignment,  the  registering 
can  never  be  refused. 

36.  OBJECT  AND  EFFECT  OF  REGISTRY. — The  authen- 
ticity of  the  assignment,  and  the  publicity  given  to  it, 
have  been  required  by  law  to  preclude  the  possibility  of 
fraud.  Otherwise  a  patentee  might  have  sold  his  patent 
to  two  or  three  different  persons,  and  received  the  value 
of  it  twice  or  thrice  over,  if  the  public  at  large  had  not 
been  officially  informed  that  the  rights  of  the  patentee  had 
passed  into  other  hands. 

The  law  declares  null  all  assignments  with  reference  to 
which  the  above  forms  have  not  been  followed.  But 
this  nullity,  merely  introduced  for  the  protection  of  the 
public,  cannot  be  opposed  by  one  of  the  parties  against 
the  other,  their  heirs,  or  assigns,  who  would  be  estopped 
by  their  own  acts  from  making  such  a  defense.  An 
irregular  assignment,  however,  confers  no  right  to  the 
patent,  as  far  as  relates  to  a  third  party.  And  notwith- 
standing the  first  assignment,  if  the  patentee  make  a 
second  and  regular  one,  it  would  stand  good;  but  the 
first  assignment,  though  it  would  not  confer  any  legal 
right  to  the  patent  itself,  would  nevertheless  enable  the 
purchaser  to  recover  from  the  original  patentee  the 
moneys  paid,  the  expenses  incurred,  and  also  damages. 


FRENCH  ASSIGNMENTS,  AC.  657 

A  person  holding  an  original  patent,  to  which  several 
other  patents  have  been  annexed  for  improvements,  can- 
not transfer  the  original  patent  without  the  improve- 
ments, nor  the  improvements  without  the  original  patent; 
the  whole  being  considered  as  only  one  patent. 

37.  FORMALITIES  WHEN  THE  ASSIGNMENT  is  NOT  DRAWN 
UP  IN  FRANCE. — If  the  deed  of  assignment  be  drawn  up 
in  a  foreign  country,  it  still  must  be  made  by  a  notary 
public,  whose  signature  must  afterwards  be  certified  by 
the  French  consul  residing  in  the  town  where  the  trans- 
fer is  executed.     It  may  also  be  necessary  to  observe  that 
the  execution  of  the  party  assigning  must  be  attested  by 
the  signature  of  two  witnesses  besides  that  of  the  notary. 
This  deed  must  then  be  sent  to  France,  and  there,  after 
being  translated  by  a  sworn  interpreter,  it  must  be  de- 
posited in  a  French  notary's  office,  who  will  deliver  a 
copy  certified,  which  will  be  as  legal  and  as  binding  as 
if  made  in  France.     This  transfer  must  likewise  be  re- 
corded and  published  in  the  same  way  above  mentioned. 

It  would  be  more  expeditious  and  less  expensive  to 
have  the  deed  drawn  up  in  French,  before  a  foreign 
notary  public,  whose  signature  should  be  afterwards  cer- 
tified by  a  French  consul;  there  would  then  be  no  neces- 
sity for  having  the  deed  translated  and  deposited  in  a 
French  notary's  office,  and  it  would  be  sufficient  to  get 
it  recorded. 

38.  PATENTEE  MAY  AUTHORIZE  TRANSFER  BY  POWER 
OF  ATTORNEY. — The  transfer  of  a  French  patent  may  be 
made  in  France  for  the  patentee  by  the  bearer  of  a  regu- 
lar power  from  him  to  that  effect.     The  forms  prescribed 
for  the  validity  of  the  transfer  of  patents  must  likewise 
be  followed  with  respect  to  the  power;  it  must  be  drawn 


658         CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

up  by  a  notary  public  and  not  by  an  attorney,  and  the 
execution  of  the  party  must  be  witnessed,  signed,  and 
certified  in  the  same  manner  as  the  deed  of  transfer. 

As  the  assignment  of  a  patent  must  be  accepted  by 
the  transferree,  his  presence  and  signature  are  required  to 
make  the  transfer  definitive;  nevertheless,  he  may  em- 
power a  person  to  accept  in  his  name  the  assignment, 
and  then  the  transfer  is  completely  effected.  The  same 
forms  are  required  for  this  power  as  the  preceding  one. 

39.  NUMBER   OF  ASSIGNEES  UNLIMITED. — Nothing  in 
the  French  law  limits  the  number  of  persons  to  whom  a 
patent  may  be  assigned ;  therefore,  no  authority  from  the 
legislature  is  required  to  make  an  assignment  to  more 
than  five  persons,  as  it  was  formerly  by  the  English  law. 
On  the  contrary,  the  number  of  persons  who  are  able  to 
take  an  interest  in  a  patent  is  unlimited. 

All  that  has  been  said  respecting  the  forms  to  be  fol- 
lowed in  the  assignment  of  a  patent  is  applicable  to 
licenses,  with  the  exception  of  the  recording,  which  is 
not  necessary. 

40.  ACTE  DE  CESSION. — 

Par-devant  moi  notarie  royal  et  public  en  la  ville  de ,  en  presence 

des  te'moins  ci-apres  de~nomm6s,  domiciles  et  qualifies. 

Est  comparu  en  personne  M.  N ,  m6canicien,  demeurant  a ,  le- 

quel  a  par  ces  pr^sentes,  cede  et  transports,  sans  autre  garantie  que  celle 

de  ses  faits  et  promesses  personnelles,  a  M.  N ,  demeurant  a ,  & 

ci  present  et  ce  acceptant,  le  brevet  d'invention  (d'importation  ou  de  per- 

fectionnement,)  pris  en  France,  par  le  comparant,  le mil  huit  cent 

pour  cinq,  dix,  ou  quinze  annees,  pour  (mettre  id  le  litre  textuel  du  brevet.) 

Le  present  transport  est  ainsi  fait,  moyennant  la  somme  de  mille  francs 

que  le  sieur  N reconnaifc  avoir  recu,  et  dont  il  donne  quittance.  Et 

en  outre  a  la  charge  par  le  cessionnaire,  qui  s'y  oblige,  de  payer  les  frais 
du  present  acte,  et  de  remplir  les  conditions  imposSes  aux  cessionnaires  par 
les  lois  sp6ciales. 


FRENCH  ASSIGNMENTS,  AC.  659 

Dont  acte  fait  et  pass6  en  1'etude,  le ,  en  presence  de  M.  R— — — , 

negociant,  demeurant  a ,  et  M.  S ,  aussi  negociant,  demeurant 

£ 

Et  ont  les  parties  signS  avec  les  t&noins,  et  ledit  notaire  apr6s  lecture 
faite. 

41.  ACTE  UNILATERAL  DE  CESSION. — 

Par-devant  moi  notaire  royal  et  public  en  la  ville  de ,  en  presence  des 

t^moins  ci-aprSs  denommeX  domicilies  et  qualifi6s. 

Est  comparu  en  personne  M.  N ,  mecanicien,  demeurant  a le- 

quel  a,  par  ces  presentes,  c6d6  et  transports,  sans  autre  garantie  que  celle 

de  ses  faits  et  promesses  personelles,  a  M.  N ,  demeurant  & ,  le 

brevet  d'invention  (d' importation  et  de  perfectionnement)  pris  en  France 

par  le  comparant,  le mil  trait  cent ,  pour  cinq,  dix,  ou  quinz  annees 

pour  (mettre  le  litre  du  brevet.) 

Le  present  transport  est  fait  moyennant  la  somme  de  mille  francs,  que  le 

comparant  reconnait  avoir  recu  des  avant  ce  jour  du  sieur  N ,  et  dont 

il  donne  quittance. 

Et  en  outre  a  la  charge  par  le  cessionnaire  de  payer  les  frais  des  presen- 
tes  et  tous  autres  frais  et  honoraires  auxquels  la  regularisation  des  presentes 
pourra  donner  lieu,  et  eufin  d'accomplir  les  formalites  impos£es  aux  cession- 
naires  de  brevets  par  les  lois  spe'ciales. 

Le  sieur  N ,  en  acceptant  la  prSsente  cession,  devra  s'obliger  en 

meme  temps  £  accomplir  toutes  les  conditions  y  stipulees. 

Dont  acte  fait  et  pay6  en  I'Stude,  le en  presence  de  M.  K.  negociant, 

demeurant  a ,  et  de  M.  S.  aussi  negociant,  demeurant  a . 

Et  a,  le  dit  comparant,  sign6  avec  les  temoins,  et  le  notaire  aprea  lecture 
faite. 

42.  POUVOIR. — 

Par-devant est  comparu  M.  A.  B . 

Lequel  a,  par  ces  pre'sentes,  constitue1  pour  son  mandataire  general  et 

special ,  auquel  il  donne  pouvoir  de  prendre,  au  nom  du  comparant, 

tous*brevets  d'invention  pour  decouvertes  qu'il  peut  avoir  faites  ou  qu'il 
pourra  faire;  fixer  la  duree  de  ces  brevets  ainsi  qu'il  le  jugera  convenable; 
prendre  pareillementtous  certificate  d'additiondevantse  rattacher,  soit  a  des 
brevets  obtenus  par  le  comparant,  soit  a  ceux  qu'il  pourra  obtenir  ulte'ri- 
eurement. 

Aux  fins  que  dessus,  et  dans  les  differents  cas  qui  pourront  se  presenter, 
faire  toutes  declarations,  elire  tous  domiciles,  signer  et  parapher  toutes 
pidces,  requerir  tous  proces-verbaux,  signer  et  emarger  toua  registres,  et  en 


660          CONTEACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

general  faire  le  ne"cessaire,  promettant  1'avoir  pour  agreable  et  le  ratifiant 
par  avance. 

Dont  acte  fait  en  l'e"tude,  le  -  . 

The  following  power,  authorizing  an  attorney  to  pros- 
ecute an  application  for  a  patent,  may  be  used  for  any 
European  State: 

Le  soussigne"  --  constitue  pour  -  mandataire  special  aux  eSeta 


M 


Auquel  il  donne  pouvoir  de  pour  -  et  en  -  nom,  faire  toutes  lea 
d^marchea  n6cessaires  pour  obtenir  de  S.  M.  1  -  d  -  un  brevet 
d  -  de  -  ana,  pour  -  . 

En  consequence,  presenter  a  Sa  dite  Majeste  1  -  ou  &  toute  autre 
autorite"  comp6tente,  toutes  Demandes,  Petitions  et  Requetes  ;  se  presenter 
a  tous  Ministe"res,  Bureaux,  Greffes  et  Commissions  que  besoin  sera  ;  signer 
et  approuver  toutes  pieces  descriptives  ;  requ6rir  tous  proce"s-verbaux,  con- 
tracter  tous  engagements  ;  verser  ou  retirer  toutes  tauxes  ;  en  prendre  quit- 
tance ou  en  donner  discharge  ;  faire  toutes  demandes  de  brevet  d'addition 
ou  de  perfectionnement;  les  e"  changer  ou  retirer  s'il  y  a  lieu;  consentir  la 
radiation  de  toutes  inscriptions  ;  retirer  e'galement  les  titres  defmitifs  ainsi 
que  toutes  les  pieces  y  affe"rentes  ;  signer  tous  actes  ou  proces-verbaux  de 
dSsistement  des  privileges  d'Etranger:  Prendre  la  parole  et  rgpondre  pour 
le  conatituant  a  toutes  reclamations  qui  pourront  surgir  relativement  au 
Brevet  dont  il  s'agit,  pendant  toute  la  dur6e  de  celui-ci.  Aux  fins  sua 
e'nonce'es,  passer  et  signer  tous  actes,  elire  domiciles  ;  substituer  dans  tout  ou 
partie  des  presents  pouvoirs,  et  dans  les  different  cas  qui  pourront  se  pr6- 
senter,  faire  ge'ne'ralement  tout  ce  qui  sera  utile  pour  arriver  &  1'obtention 
du  privilege  sus  relate,  promettant  le  constituant  avoir  le  tout  pour  agr6- 
able,  et  le  ratifier  au  besoin. 

Mil  huit  cent  -  . 


V.  Assignment  of  Copyright. 


SEO. 

43.  Copyright  assignable. 


SEO. 

45.  Form  of  assignment. 


44.  Recording. 

43.  COPYRIGHT  ASSIGNABLE. — Copyrights  shall  be  as- 


ASSIGNMENT  OF  COPYRIGHT.  661 

eignable  in  law  by  any  instrument  of  writing.     (Act  of 
July  8,  1870,  §  89.)     . 

To  be  valid  and  operative,  an  assignment  of  an  interest 
in  a  copyright  must  be  in  writing ;  but  an  agreement  to 
assign  may  be  by  parol.  (Gould  v.  Banks,  8  Wend.,  565.) 
An  assignment  of  a  "copyright"  in  general  terms  is  to 
be  referred  to  what  was  then  in  existence,  and  not  to  any 
future  contingency.  It  should  not  be  extended  by  con- 
struction beyond  the  first  term,  unless  it  seems  to  be  so 
actually  meant  by  the  author,  and  to  include  a  future 
contingency.  (Pierpont  v.  Fowle,  2  Wood,  g  Minot,  43-45.) 
But  if  it  uses  language  looking  beyond  the  existing  copy- 
right, the  rule  is  otherwise.  (Ib.) 

44.  RECORDING. — Such  assignment  shall  be  recorded 
in  the  office  of  the  Librarian  of  Congress  within  sixty 
days  after  its  execution,  in  default  of  which  it  shall  be 
void  as  against  any  subsequent  purchaser  or  mortgagee 
for  a  valuable  consideration  without   notice.      (Act  of 
J«%8,1870,§89.) 

An  assignment  of  a  copyright,  although  not  recorded, 
is  still  valid  as  between  the  parties  and  as  to  all  parties 
not  claiming  under  the  assignors.  ( Webb  v.  Powers,  2 
Wood.  £  Minot,  510.) 

45.  ASSIGNMENT  OF  COPYRIGHT  FOR  ORIGINAL  AND  RE- 
NEWED TERMS. — 

Indenture  made  this  23d  day  of  April,  1870,  between  Charles  Russell, 
of  Brooklyn,  State  of  New  York,  of  the  one  part,  and  George  Arnold,  of 
the  city  and  State  of  New  York. 

Whereas  the  said  Charles  Eussell  has  written  and  composed  a  book,  en- 
titled "The  Law  of  the  Farm:" 

Now  this  indenture  witnesseth,  that  the  said  Charles  Russell,  for  and  in 
consideration  of  the  sum  of  $500,  to  him  in  hand  paid  by  said  George  Ar- 
nold, the  receipt  of  which  is  hereby  acknowledged,  has  bargained,  sold,  and 
assigned,  and  by  these  presents  does  bargain,  sell,  and  assign  unto  the  said 
56 


662          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

George  Arnold,  his  heirs,  executors,  administrators,  and  assigns,  all  the  said 
book,  and  the  manuscript  thereof,  and  all  his  right,  title,  and  interest,  prop- 
erty, claim,  and  demand,  of  every  kind  and  nature  whatsoever,  of,  in,  and 
to  the  same,  and  in  any  and  all  copyrights,  and  any  and  all  renewals  there- 
of, which  may  or  can  be  had,  or  secured,  or  taken,  in  respect  to  said  book 
or  manuscript,  under  and  by  virtue  of  any  acts  of  Congress,  with  any  and 
all  profit,  benefit,  and  advantage  that  shall  or  may  arise  by  or  from  print- 
ing, publishing,  or  vending  the  same,  during  the  original  or  renewed  terms 
of  any  such  copyright.  To  have  and  to  hold  the  same  to  the  said  George 
Arnold,  his  heirs,  executors,  administrators,  and  assigns  forever. 

And  the  said  Charles  Bussell  agrees  to  examine  and  correct  the  proof- 
sheets  of  said  work  as  fast  as  they  shall  be  furnished,  and  to  make  and 
complete  a  full  and  correct  index  therefor,  as  soon  as  may  be  after  all  the 
signatures  of  the  text  shall  be  furnished  for  that  purpose. 

And  the  said  George  Arnold,  for  himself,  his  heirs,  executors,  administra- 
tors, and  assigns,  covenants  and  agrees  to  furnish  and  deliver,  free  of  cost,  to 
said  Charles  Russell,  twenty-five  bound  copies  of 'said  work,  within  three 
months  after  the  said  index  shall  or  may  be  completed. 

In  witness  whereof  the  said  parties  have  hereunto  set  their  hands  and 

seals  the  day  and  year  first  above  written. 

CHAELES  RUSSELL.    [L.  s.] 

GEOEGE  AENOLD.       [L.  s.] 
Sealed  and  delivered 
in  presence  of — 

JOHN  DOE, 

RICHAED  ROE.          -,-A 

VI.  Forms  of  Procedure  in  Patent  Causes. 


SEC. 

46.  Bill  in  equity. 

47.  Equity  subpena  to  appear  and 

answer. 

48.  Equity  precept  for  appearance. 

49.  Equity  motion  for  leave  to  file 

supplemental  bill. 

46.  BILL  IN  EQUITY. — 

UNITED  STATES  CIECUIT 


SEC. 

50.  Equity  answer. 

51.  Equity  replication. 

52.  Equity  notice  for  proofs  under 

oral  examination. 

53.  Declaration. 

54.  Plea  and  special  notice. 


)  STATES  CIECUIT ,  )__,.. 

TV  ,  .  ,    ,  \  In  Equity. 

District  of ,  j 

To  the  honorable  the  judges  of  the  circuit  court  of  the  United  States 


FORMS  OF  PROCEDURE.  663 


for  the circuit,  within  and  for  the district  of ,  ', 

a  citizen  of  the  State  of ,  (or  a  corporation  duly  established  under 

the  laws  of  the  State  of ,)  brings  this  his  bill  of  complaint  against 

,  a  citizen  (or  citizens)  of ,  in  said  district. 

And  thereupon  your  orator  complains  and  says,  that ,  a  citizen 

of  the  United  States,  was  the  true  and  original  inventor  of  a  new  and  use- 
ful improvement  in -,  which  said  improvement  was  not  known  or 

used  by  others^before  the  invention  and  discovery  thereof  by ,  who 

thereupon  did  apply  to  the  Commissioner  of  Patents  of  the  United  States 
for  letters  patent  for  said  improvement,  and  fully  and  in  all  respects  com- 
'  plied  with  all  the  requirements  of  the  law  in  that  behalf,  and  especially 
made  oath  that  he  verily  believed  himself  to  be  the  true  inventor  or  dis- 
coverer of  the  said  improvement,  and  also  paid  into  the  Treasury  of  the 
United  States  the  sum  of  thirty  dollars,  and  presented  to  the  Commissioner 
of  Patents  of  the  United  States  a  petition,  setting  forth  his  desire  to  obtain 
an  exclusive  property  in  said  improvement,  and  praying  that  letters  pat- 
ent might  for  that  purpose  be  granted  unto  him;  and  also  delivered  and 
filed  in  said  office  of  the  Commissioner  of  Patents  a  written  description  of 
his  said  improvement,  in  such  full,  clear,  and  exact  terms  as  to  enable  any 
person  skilled  in  the  art  with  which  the  said  improvement  is  most  nearly 
connected  to  make  and  use  the  same;  which  said  description  was  duly 

signed  by  the  said and  attested  by  two  witnesses ;  and  thereupon 

the  said  Commissioner  of  Patents  caused  letters  patent  to  be  made  out  and 
issued  in  the  name  of  the  United  States  of  America,  in  due  form  of  law  in 

all  respects,  bearing  date  the day  of ,  in  the  year  one  thousand 

eight  hundred  and ,  whereby  was  granted  unto  the  said ,  his 

heirs,  administrators,  or  assigns,  for  the  term  of years  from  the 

date  thereof,  the  full  and  exclusive  right  and  liberty  of  making,  construct- 
ing, using,  and  vending  to  others  to  be  used,  the  said  improvement,  which 
is  entitled  in  said  letters  patent,  "A  new  and  useful  improvement  in 
;"  and  the  said  letters  patent  having  been  signed  by ,  Secre- 
tary of  the  Interior  of  the  United  States,  and  countersigned  and  sealed 

with  the  seal  of  the  Patent  Office  by ,  Commissioner  of  Patents  of 

the  United  States,  and  the  same,  having  been  duly  recorded,  were  issued 
and  delivered  unto  the  said . 

A.nd  your  orator  further  shows  unto  your  honors,  that  the  defendant, 
-,  since  the day  of ,  has  been  engaged  in  making,  using, 


and  selling  a  large  amount  of ,  such  as  is  described  in  said  patents, 

and  that  the  defendant  refused  to  pay  to  your  orator  any  of  the  profits 
which made  by  such  unlawful  manufacture,  use,  and  sales,  or  to 


664    CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

desist  from  making,  using,  and  selling  the  same,  in  violation  and  infringe- 
ment of  your  orator's  rights,  secured  to  him  as  aforesaid,  and  without 
his  consent  or  allowance. 

All  which  actings  and  doings  are  contrary  to  equity  and  good  conscience, 
and  tend  to  the  manifest  injury  of  your  orator  in  the  premises. 

In  consideration  whereof,  and  forasmuch  as  your  orator  can  only  have 
adequate  relief  in  this  honorable  court,  where  matters  and  things  of  this 
kind  are  made  cognizable  by  statute :  To  the  end,  therefor^  that  the  said 

defendant  may,  if can,  show  why  your  orator  should  not  have  the 

relief  hereby  prayed,  and  may,  upon corporal  oath  and  according  to 

best  and  utmost  knowledge,  remembrance,  information,  and  belief, 

full,  true,  direct,  and  perfect  answer  make  to  the  matters  and  things  here- 
inbefore stated  and  charged : 

And  that  the  said  defendant  may  answer  the  premises,  and.  that 

may  be  decreed  to  account  with  and  pay  over  to  your  orator  the  profits 

which has  or  might  have  nrade  by infringement  of  said  letters 

patent  in  such  unlawful  manufacture,  use,  and  sale  of . 

May  it  please  your  honors,  the  premises  considered,  to  grant  unto  your 
orator  a  writ  of  injunction,  issuing  out  of  and  under  the  seal  of  this  hon- 
orable court,  (or  issued  by  one  of  your  honors,  according  to  the  form  of  the 
statute  in  such  case  made  and  provided,)  enjoining  and  restraining  the  said 

clerks,  attorneys,  agents,  servants,  and  workmen  from  making  any 

as  is  described  in  such letters  patent, 

And  that  your  orators  may  have  such  further  and  other  relief  as  the  na- 
ture of  the  case  may  require  and  to  your  honors  seems  meet; 

May  it  please  your  honors  to  grant  unto  your  orator  not  only  the  writ 
of  injunction  conformable  to  the  prayer  of  this  bill,  but  also  a  writ  of  sub- 

pena,  directed  to  the  said  ,  commanding  ,  on  a  day  certain, 

therein  to  be  named,  to  be  and  appear  in  this  honorable  court,  then  and 
there  to  answer  the  premises,  and  to  stand  to,  perform,  and  abide  such  fur- 
ther order,  direction,  and  decree  as  may  be  made  against . 

And  your  orator,  as  in  duty  bound,  will  ever  pray,  &c. 


Solicitor  and  of  Counsel  for  Complainant. 

UNITED  STATES  OF  AMEEICA, 
District  of . 

At ,  in  the  county  of ,  and  district  aforesaid,  on  this 

day  of ,  A.  D.  18 — ,  personally  appeared  the  above-named , 

who,  being  duly  sworn  according  to  law,  deposeth  and  saith  that  he  is  the 


FORMS  OF  PROCEDURE.  665 

complainant  in  the  foregoing  bill,  and  has  read  the  same,  and  knows  the 
contents  thereof; 

That  the  said  bill  is  true  of  his  own  knowledge,  except  as  to  those  mat- 
ters which  are  therein  stated  to  be  on  information  and  belief  of  the  com- 
plainant, and  as  to  those  matters  he  believes  it  to  be  true; 

That  this  deponent  verily  believes to  have  been  the  first  and 

original  inventor  of  the  improvements  claimed  in  said letters  patent. 

47.  EQUITY  SUBPENA  TO  APPEAR  AND  ANSWER. — 

The  President  of  the  United  States  of  America  to ,  greeting  .- 

You  are  hereby  commanded  that  you  personally  appear  before  the  judges 

of  the  circuit  court  of  the  United  States  for  the district 

of  New  York,  in  the  second  circuit,  on  the ,  to  answer  to  a 

bill  of  complaint  exhibited  against  you  in  the  said  court  by 

[L.  S.J    ^  ancj  to  (JQ  further  and  receive  whatever  said  court  shall 

have  considered  in  that  behalf;  and  this  you  are  not  to  omit 
under  the  penalty  of  two  hundred  and  fifty  dollars. 

Witness  the  Hon. ,  Chief  Justice  of  the  Supreme  Court  of 

the  United  States,  at  the  city  of ,  in  said district,  the 

day  of ,  eighteen  hundred  and . 


Solicitor  for  Plaintiff. 

Memorandum. — The  defendant  is  to  enter  his  appearance  in  the  suit 

above  mentioned  in  the  clerk's  oifice  at ,  on  or  before  the  day  at 

which  the  above  subpena  is  returnable,  otherwise  the  bill  may  be  taken 

pro  confesso.  , 

Solicitor  for  Plaintiff. 

Marshal's  Return. — I  hereby  certify  that  I  served  the  within  subpena 

on  ,  at  ,  on  the  day  of  ,  A.  D.  18 — ,  and  on 

,  at ,  on  the day  of ,  A.  D.,  18 — ,  by  delivering 

to  and  leaving  with  them  and  each  of  them  a  copy  of  this  subpena,  and 
at  the  same  time  showing  them  and  each  of  them  this  original,  with  the 
seal  of  the  court  attached.  , 

Deputy. 
DISTKICT  OF  .NEW  YORK. 

I  hereby  authorize  and  depute to  execute  the  annexed  process, 

and  make  due  return  according  to  law.  , 

United  States  Marshal  — —  District  of  New  York. 


Deputy  Marshal. 
Dtj* 


666       CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 
48.  EQUITY  PRECEPT  FOR  APPEARANCE. — 

UNITED   STATES   CIRCUIT   COUET  DISTRICT  OF   NEW  YORK. 


•  In  Equity. 


The  clerk  of  this  court  will  please  enter  my  appearance  as  solicitor  for 
the  defendant  in  the  above-entitled  cause. 

Yours,  &c., , 

Solicitor  for  Defendant. 
Dated ,  18—. 

49.  EQUITY  MOTION  FOR  LEAVE  TO  FILE  SUPPLEMENTAL 
BILL. 

UNITED  STATES  CIRCUIT  COURT  DISTRICT  OF  NEW  YORK. 

•  In  Equity. 


The  complainants  in  the  above-entitled  cause  move  the  court,  upon  the 
proposed  supplemental  bill  of  complaint  herewith  filed,  for  leave  to  file  the 
same  as  a  supplemental  bill  of  complaint  in  said  cause,  and  that  the  same 

stand  filed  therein  as  of  the  rule  day  for  the  first  Monday  of ,  A.  D, 

18 — ,  (motion  to  be  heard  on  said  rule  day  before  his  honor  ,  at 

o'clock.)  , 

Dated .  Solicitor  for  Complainant. 

50.  EQUITY  ANSWER. — 

UNITED  STATES   CIRCUIT   COURT DISTRICT  OF   NEW   YORK. 


In  Equity 


The  answer  of to  the  bill  of  complaint  of ,  complainant. 

The  defendant,  now  and  at  all  times  hereafter  saving  and  reserving  to 
himself  all  and  all  manner  of  benefit  and  advantage  of  exception  to  the 
many  errors  and  insufficiencies  in  the  complainant's  said  bill  of  complaint 
contained,  for  answer  thereunto,  or  unto  so  much  or  such  parts  thereof  as 
this  defendant  is  advised  is  material  for  him  to  make  answer  unto,  answers 


•  All  of  which  matters  and  things  the  said  defendant  is  ready  to  aver, 
maintain,  and  prove,  as  this  honorable  court  shall  direct,  and  hereby  praya 
to  be  hence  dismissed  with  his  reasonable  costs  and  charges  in  that  behalf 

sustained.  , 

Solicitor  and  of  Counsel. 


FORMS  OF  PROCEDURE.  667 

DISTRICT  OF  NEW  YORK, 
County  of . 

,  being  duly  sworn,  says  that  he  is  the  defendant  in  the 

above-entitled  cause ;  that  he  has  read  the  foregoing  answer,  and  knows  the 
contents  thereof;  and  that  the  same  is  true  of  his  own  knowledge,  except  as 
to  those  matters  therein  stated  on  information  and  belief,  and  as  to  those 
matters  he  believes  it  to  be  true. 

Sworn  to  before  me  this day  of ,  A.  D.  18 — . 

51.  EQUITY  REPLICATION. — 

UNITED  STATES  CIRCUIT  COURT DISTRICT  OF  NEW  YORK. 

vs.  >  In  Equity, 


The  replication  of  the  above-named  complainant  to  the  answer  of , 

defendant. 

This  repliant,  saving  and  reserving  to  himself  now  and  at  all  times  here- 
after all  and  all  manner  of  benefit  and  advantage  of  exception  which  may 
be  had  or  taken  to  the  manifold  insufficiencies  of  the  said  answer,  for  re- 
plication thereunto  says  that  will  aver,  maintain,  and  prove 

bill  of  complaint  to  be  true,  certain,  and  sufficient  in  the  law  to  be  answered 
unto ;  and  that  the  said  answer  of  the  said  defendant  is  uncertain,  untrue, 
and  insufficient  to  be  replied  unto  by  repliant  without  this ;  that  any  other 
matter  or  thing  whatsoever  in  the  said  answer  contained  material  or  effec- 
tual in  the  law  to  be  replied  unto,  and  not  herein  and  hereby  well  and 
sufficiently  replied  unto,  confessed  and  avoided,  traversed  or  denied,  is  true; 

all  which  matters  and  things ,  repliant  is  and  will  be  ready  to  aver, 

maintain,  and  prove,  as  this  honorable  court  shall  direct,  and  humbly  prays 
as  in  and  by said  bill has  already  prayed. 


Solicitor  for  Complainant. 

52.  EQUITY  NOTICE  FOR  PROOFS  UNDER  ORAL  EXAMIN- 
ATION.— 

UNITED   STATES   CIRCUIT  COURT DISTRICT   OF   KEW   YORK. 


vs.  >  In  Equity. 

SIR  :  You  will  please  take  notice  that  the  complainants  in  said  cause 
desire  the  evidence  to  be  adduced  therein  to  be  taken  orally,  under  the 
67th  rule  of  the  Supreme  Court,  as  amended ;  and  you  will  further  take 


668       CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

notice,  that  by  an  order  made  in  said  cause  by ,  Esq.,  one  "of 

the  examiners  of  said  court,  the  examination  of  witnesses  on  the  part  of 

the  said  complainants  will  take  place  before  said  examiner  at ,  in  the 

city  of ,  on the day ,  A.  D.  18 — ,  at  —  o'clock, 

and  proceed  as  said  examiner  may  direct. 

Dated . 

Yours.,  &c,  , 

Solicitor  for  Complainants. 

To , 

Solicitor  for  Defendants  and ,  Defendants. 

53.  DECLARATION. — 

UNITED  STATES  CIECUIT   COUET DISTBICT  OF   NEW  YOBK. 


Of  the day  of ,  186 — .  As  yet  of term,  in  the  year  of 

our  Lord  one  thousand  eight  hundred  and . 

DISTRICT  OF  NEW  YORK,  ss. 

,  being  a  citizen  of  the  United  States  of  America,  and  a 

resident  of ,  plaintiff  in  this  suit,  by ,  his  attorney, 

complains  of ,  defendant-,  of  the  said  district,  of  a 

plea  of  trespass  on  the  case :  For  that  whereas  the  said ,  of 

the  town  of ,  in  the  county  of ,  and  State  of  New  York,  and 

in  said  district,  before  and  at  the  time  of  the  making  of  the  letters  patent 
and  of  the  committing  of  the  grievances  by  the  said 7 ,  as  here- 
tofore mentioned,  were  the  true,  original,  and  first  inventors  of  a  certain 

new  and  useful  improvement  in ,  which  was  not  known  nor  used 

before  such  invention  or  discovery  as  aforesaid,  and  were  not  at  the  time 
of  the  plaintiff's  application  for  letters  patent  therefor,  as  hereinafter 
mentioned,  in  public  use  or  on  sale  with  the  consent  or  allowance  of  said 

or  either  of  them ;  and  whereas  said ,  being 

such  original  and  first  inventors,  and  being  citizens  of  the  United  States, 
obtained  for  said  invention  letters  patent  of  the  United  States  in  due 

form  of  law,  under  seal  of  the  Patent  Office,  bearing  date  the  , 

and  whereas  the  said  letters  patent  having  been  wholly  assigned  by  the 
said to  the  said ,  and,  having  been  surren- 
dered by  the  said for  being  partially  invalid  on  account  of 

a  defective  specification,  were  canceled  and  new  letters  ordered  to  issue  to 
said on  the  amended  specification ;  and  whereas  the  plaint- 


FORMS  OF  PROCEDURE.  669 

iff  did  accordingly  obtain  new  letters  patent  for  such  invention  in  due 
form  of  law  upon  such  amended  specification,  under  the  seal  of  the  Patent 
Office,  and  signed  by  the  Secretary  of  the  Interior,  and  countersigned  by 
the  Commissioner  of  Patents,  and  bearing  date  the ,  eighteen  hun- 
dred and ,  which  said  reissued  letters  patent  did  grant  according  to 

law  to  the  said ,  his  heirs,  administrators,  and  assigns,  for 

the  term  of years  from  the  said day  of ,  eighteen  hun- 
dred and ,  the  full  and  exclusive  right  and  liberty  of  making,  con- 
structing, using,  and  vending  to  others  to  be  used,  the  said  improvement, 

a  description  whereof  was  given  in  the  words  of  the  said ,  in 

a  certain  schedule  to  said  letters  annexed  and  made  part  thereof,  as  by  ref- 
erence to  said  letters  patent  and  the  said  specification  thereto  annexed, 
which  the  plaintiff  now  brings  here  into  court,  will  fully  appear. 

And  the  plaintiff  further  says,  that  from  the  time  of  the  granting  to  him 
of  the  said  letters  patent  hitherto  he  has  made,  used,  and  vended  to  others 
to  be  used,  the  said  improvement,  to  his  great  advantage  and  profit.  Yet 
the  said  defendant-,  well  knowing  the  premises,  but  contriving  to  injure 

the  plaintiff,  did,  on  the  day  of ,  eighteen  hundred  , 

and  at  divers  other  times  before  and  afterwards,  during  the  said  term  of 
years  mentioned  in  said  letters  patent  and  before  the  commence- 
ment of  this  suit  at  ,  in  the  county  of ,  and  State  of  New 

York,  unlawfully  and  wrongfully,  and  without  the  consent  or  allowance, 
and  against  the  will  of  the  plaintiff,  did  use  and  cause  to  be  used  the  said 
improvement,  in  violation  and  infringement  of  the  exclusive  right  so 
secured  to  plaintiff  by  said  letters  patent  as  aforesaid,  and  contrary  to  the 
form  of  the  statute  of  the  United  States  in  such  case  made  and  provided, 
whereby  the  plaintiff  has  been  greatly  injured  and  deprived  of  great  profit 
and  advantage,  which  he  otherwise  would  have  derived  from  said  improve- 
ment, and  has  sustained  actual  damage  to  the  amount  of dollars ; 

and  by  force  of  the  statute  aforesaid  an  action  hath  accrued  to  him  to 
recover  the  said  actual  damages  and  such  additional  amount,  not  exceed- 
ing in  the  whole  three  times  the  amount  of  such  actual  damage,  as  the  court 
may  see  fit  to  order  and  adjudge,  besides  costs.  Yet  the.said  defendant-, 
though  requested,  ha—  never  paid  the  same,  or  any  part  thereof,  to  the 
plaintiff,  but  ha-  refused,  and  yet  refuse-  so  to  do,  and  therefore  the 

plaintiff  brings  this  suit.  , 

Attorney  and  of  Counsel  for  Plaintiff", 

County,  N.  Y. 

DISTEICT  OF  NEW  YORK,  ss. 


-,  being  duly  sworn,  says,  that  on  the day  of  • 


670          CONTRACTS,  ASSIGNMENTS,  AND  PRECEDENTS. 

186 — ,  he  personally  served    on  the  defendant ,  within 

named,  a  copy  of  the  within  declaration  and  notice  of  rule  to  plead  as 
herein  indorsed. 

Sworn  before  me  this day  of ,  186  — . 

SiE:  Please  to  take  notice  that  the  within  is  a  copy  of  a  declaration  filed 

with  the  clerk  of  the  United  States  circuit  court  at ;  that  you  are 

required  to  plead  thereto  within  twenty  days  from  service  hereof  on  you, 

or  judgment  by  default,  &c.  Yours,  &c., , 

Plaintiff's  Attorney, County,  N.  Y. 

To  the  above  defendant. 

54.  PLEA  AND  SPECIAL  NOTICE. — 

UNITED   STATES  CIRCUIT  COURT DISTRICT  OF  NEW  YOEK. 


Plea. 


And  the  said  defendant, ,  by ,  his  attorney, 

comes  and  defends  the  wrong  and  injury,  when,  &c.,and  says  that  he  is  not 
guilty  of  the  supposed  grievances  above  laid  to  his  charge,  or  any  or  either 
or  any  part  thereof,  in  manner  and  form  as  the  said  plaintiff  hath  above 
thereof  complained  against ,  and  of  this  the  said  defendant  puts  him- 
self upon  the  country,  and  the  said  plaintiff  doth  the  like,  &c. 

And  it  is  suggested  to  the  court,  now  here,  that  the  defendant  givee  the 
following  notices  in  writing  of  special  matter  to  the  plaintiff,  thirty  days 
before  trial,  under  section  15  of  the  act  of  Congress  passed  July  4,  1836, 
entitled  "An  act  to  promote  the  progress  of  the  useful  arts,  and  to  repeal 
all  acts  and  parts  of  acts  heretofore  made  for  that  purpose:" 

First,  Notice  of  Special  Matter. — Take  notice  that  the  above-nam^d 
defendant  will  prove  upon  the  trial  of  this  cause,  in  bar  of  the  said  plaintiff's 

action,  that  the  said ,  the  assignor  of  the  said  plaintiff,  was 

not  the  original  or  first  inventor  of  (here  describe  the  patent.) 

And  the  said  defendant  will  further  prove,  upon  such  trial  as  aforesaid, 
that  the  same  principle  was  known  to  and  had  been  previously  combined  by 

and  invented  by  • ,  who  resides  (or  resided)  at ,  in  the 

State  of  ,  and  that  the  same  was  known  to  and  combined  by  said 

as  early  as ,  18 — . 

And  the  said  defendant  will  further  prove,  upon  said  trial  as  aforesaid, 
that  what  is  claimed  in  said  declaration  and  in  said  letters  patent  therein 
mentioned,  and  the  specifications  and  drawings  thereto  attached,  as  the  in- 
vention of  said  assignors  of  said  plaintiff  named  in  said  declaration,  was 


FORMS  OP  PROCEDURE.  671 

substantially  and  in  principle  known  to ,  of ,  in  the 

State  of . 

And  the  said  defendant  will  further  prove,  upon  paid  trial  as  aforesaid, 
that  the  thing  patented  in  and  by  the  letters  patent  was  not  first  invented 

by  or  known  to  said ,  but  the  same  was  publicly  known  and 

used  prior  to  the  time  when  it  is  alleged  in  this  action  the  same  was  in- 
vented by  him. 

And  the  defendant  will  prove  that ,  who  resides  at , 

possessed  such  prior  knowledge  of  the  said  thing  mentioned  as  aforesaid  in 
said  declaration. 

And  that  the  said  thing  was  in  public  use  and  on  sale  anterior  to  the  said 
supposed  discovery  or  invention  thereof  by  said . 

Second.  Please  take  notice  that,  on  said  trial  of  this  cause,  in  addition  to 

the  notices  already  served  upon  you,  the  defendant  will  prove  by 

,  of ,  and  others,  that  they  knew  of  the  use  of  said  thing,  or 

substantially  the  same,  as  the  alleged  invention  of  said ,  and 

the  same,  or  substantially  the  same,  was  used  by prior  to 

the  alleged  invention  thereof. 

That  the  same,  or  substantially  the  same,  was  previously  invented  and 
patented ,  18  — ,  by . 

And  the  same  was,  previously  to  the  time  when  it  is  claimed  they  in- 
vented or  discovered  the  same,  in  public  use  with  his  consent  and  allow- 
ance, and  upon  sale  with  his  consent  and  allowance,  and  subsequent  to  the 
time  when  it  is  claimed  he  invented  or  discovered  the  same. 


SUPPLEMENT. 


The  following  rules  of  practice  in  the  supreme  court  of  the  District  of 
Columbia,  in  appeals  from  the  Commissioner  of  Patents,  were  adopted  in 
general  term,  November  30,  1870,  after  this  work  had  been  stereotyped: 

RULES  OF  PEACTICE. 

1.  The  appellant's  petition  shall  be  addressed  to  the  court,  and  shall  be 
substantially  as  follows: 

To  the  Supreme  Court  of  the  District  of  Columbia,  in  bane, ,  187 — . 

The  petition  of ,  a  citizen  of ,  in  the  (State,  territory,  dis- 
trict,') of ,  respectfully  shows  as  follows: 

a.  About  the day  of ,  18 — ,  I  invented,  (describe  the  subject 

of  the  desired  patent  in  the  identical  words  of  the  application  to  the  Patent 
Office.) 

b.  On  the day  of ,  18 — ,  in  the  manner  prescribed  by  law,  I 

presented  my  application  to  the  Patent  Office,  praying  that  a  patent  be 
issued  to  me  for  said  invention. 

c.  Such  proceedings  were  had  in  said  office  upon  said  application  that, 

on  the day  of ,  18 — ,  it  was  rejected  by  the  Commissioner  of 

Patents. 

d.  I  thereupon  appealed  to  this  court,  and  gave  notice  thereof  to  the 
Commissioner,  and  filed  in  his  office  the  following  reasons  for  said  appeal : 

e.  The  Commissioner  of  Patents  has  furnished  me  a  complete  copy  of  all 
the  proceedings  in  his  office  upon  my  said  application,  which  copy  has  been 
filed  herewith,  and  is  to  be  taken  as  part  hereof. 

/.  And  thereupon  I  pray  that  the  court  do  revise  and  reverse  said  decis- 
ion, to  the  end  that  justice  may  be  done  in  the  premises. 

2.  This  petition  shall  be  filed  in  the  clerk's  office  of  this  court,  and  as 
soon  as  the  petitioner  has  made  the  deposit  required  by  law  at  the  com- 
mencement of  suits  in  this  court,  or  said  deposit  has  been  dispensed  with,' 
the  clerk  shall  enter  the  case  in  a  docket  to  be  provided  by  him  for  the 
purpose,  and  in  which  a  brief  of  said  filing  and  of  all  subsequent  proceed- 

67  <>73 


674  SUPPLEMENT. 

ings  in  the  case  shall  be  entered,  as  and  when  they  successively  occur, 
down  to  and  including  the  final  decision. 

3.  The  clerk  shall  provide  a  minute  book  of  his  office,  in  which  he  shall 
record  every  order,  rule,  judgment,  or  decree  of  the  court  in  each  case,  in 
the  order  of  time  in  which  said  proceedings  occur.     And  of  this  book  there 
shall  be  two  alphabetical  indexes,  one  showing  the  name  of  the  party 
applying  for  the  patent,  and  the  other  designating  the  invention  by  its 
subject-matter  or  name. 

4.  The  cases  in  the  docket  of  causes  shall  be  successively  numbered  from 
No.  1,  onward,  and  each  case  shall  also  be  designated  by  the  number  as- 
signed to  it  on  the  records  of  the  Patent  Office. 

5.  This  docket  shall  be  called  for  the  trial  of  the  cases  thereon  on  the 
first  day  of  each  session  of  this  court  in  general  term,  provided  the  petition 
has  been  filed  ten  days  before  the  commencement  of  the  term. 

6.  The  opinions  of  the  court,  when  written,  shall  be  kept  by  the  clerk 
in  the  order  of  their  delivery  in  a  temporary  book-file,  indexed;  and  when 
so  many  have  been  delivered  as  will  make  a  volume  of  convenient  size,  ho 
shall  cause  them  to  be  bound. 

7.  The  clerk  shall  furnish  to  any  applicant  a  copy  of  any  paper  in  any 
of  said  appeals  on  payment  of  the  lawful  fees. 

8.  Hearing  of  said  appeals  shall  be  subject  to  the  rules  of  the  court  pro- 
vided for  other  causes  therein. 

9.  When  the  testimony  of  the  Commissioner  or  of  any  examiner,  touch- 
ing the  principles  of  the  invention  iu  question,  shall  be  deemed  necessary, 
it  shall  be  taken  orally  in  open  court,  unless  otherwise  ordered  by  the 
court.     And  in  such  case  the  court  may  order  it  to  be  reduced  to  writing, 
and  filed  or  entered  on  its  minutes,  if  it  think  proper. 

10.  The  final  judgment  or  order  of  the  court  shall  not  recite  any  of  the 
facts  made  to  appear  in  the  case,  but  shall  be  to  the  following  effect: 

"This  appeal  having  been  heard  upon  the  record  from  the  Patent  Office, 
[and  upon  the  testimony  of  the  Commissioner  of  Patents,]  [of  one  of  the 
examiners,]  touching  the  principles  of  the  invention,  and  having  been 
argued  by  [counsel  for]  the  petitioner  and  [for]  the  Commissioner, 

"  It  is  thereupon  ordered  and  adjudged  that  the  [petition  be  dismissed] 
[Commissioner  do  issue  to  the  petitioner  a  patent,]  [as  prayed,]  [granting 
the  petitioner  (so  and  so.}  ] 

"And  that  the  clerk  of  this  court  transmit  to  the  Commissioner  of  Pat- 
ents a  copy  of  this  decree  duly  authenticated." 


INDEX. 


ABANDONMENT. 

Statute  provisions  concerning,  9, 

12,  13,  14. 
More  than  two  years'  public  use 

constitutes,  264. 

May  be  within  two  years,  266, 267. 
Use  which  amounts  to,  264, 265. 
What  delay  will  amount  to,  204, 

269. 

Evidence  of,  267,  521.  ^ 
in  interference  cases,  483-491. 
by  non-completion  of  an  appli- 
cation, 260. 

by  non-prosecution  of  applica- 
tion, 265-268. 

by  non-payment  of  final  fee,  343. 
by  neglect  to  prosecute  applica- 
tion rejected  prior  to  July  8, 
1870,  345-348. 
ABSTRACT  PRINCIPLE. 

When  reduced  to  practice  patent- 
able,  219. 
Invention  should  not  be  described 

as,  298. 
ACTION  AT  LAW. 

Arising  under  patent  laws,  24, 25. 
trade-mark  laws,  39. 
copyright  laws,  50,  51. 
Form  of  declaration  in,  668. 
ADMINISTRATOR. 

May  apply  for  letters  patent,  13, 
271. 


ADMINISTEATOH  (continued.) 

for  extension,  591. 
Form  of  petition  for  letters  patent 
by,  280. 

for  extension  by,  604. 
Form  of  oath  on  application  for 

patent  by,  318. 
for  extension  by,  606. 
AFFIDAVIT.  (See  Oath,  Deposition.) 
AFFIRMATION.  (See  Oath.) 
AGENT.  (See  Attorney.) 
ALIEN.  (See  Foreign  Inventor.) 
AMENDMENT.      (See     Examination, 

Appeal,  Application.) 
APPEAL. 

To  examiners-in-chief.  (SeeExam- 

iner-in- chief.) 
To  Commissioner  in  person.  (See 

Commissioner  of  Patents.) 
To  the  supreme  court  of  the  Dis- 
trict of  Columbia.     (See  Su- 
preme Court  of  the  District  of 
Columbia.) 

To  the  Supreme  Court  of  the  Uni- 
ted States.  (See  Supreme  Court 
of  the  United  States.) 
APPLICATION  FOR  LETTERS  PATENT. 
Fee  of  $15,  payable    on    filing, 

32. 

Subject-matter  of,  218. 
Abandonment  of,    (See  Abandon- 
ment.) 

675 


676 


INDEX. 


APPLICATION  (continued.) 

When  caveator  is  required  to  com- 
plete, 208. 

May  be  made  by  citizens  or  aliens, 
218. 

For  inventions  patented  abroad, 
219. 

Division  of,  when  required,  254, 
255, 339. 

Number  of  inventions  included  in, 
255. 

When  inventions  must  be  patented 
under  a  prior,  255. 

To  be  made  in  writing,  260. 

Time  to  complete  and  prosecute, 
260. 

Clerical  requirements  of,  260. 

Should  be  complete  when  filed, 
261. 

Correspondence  with  the  office  re- 
garding, 261. 

Preserved  in  secrecy  pending,  262. 

When  information  will  be  given 
concerning,  262. 

Two  years'  use  prior  to,  allowed, 
264. 

When  considered  as  continuing, 
268. 

Is  to  be  by  way  of  petition,  271. 
(See  Petition.) 

To  be  made  by  actual  inventor 
if  alive,  271. 

When  made  by  joint  inventors, 
271-274. 

May  be  made  by  legal  represent- 
atives, 13,  274,  280. 

To  include,  the  specification,  284. 

To  be  accompanied  by  oath,  317. 
(See  Oath.) 

Examination  of,  (See  Examination.) 


APPLICATION  (continued.) 

Rejection  of,  334-339. 

Amendment  of,  333,  334.  (See  Ex- 
amination.) 

Which  take  precedence,  331. 

May  be  renewed,  343,  345. 

On  rejection  of,  applicant  may  ap- 
peal. (See  Appeal.) 

Right  of  purchasers  prior  to,  15. 
ARGENTINE  REPUBLIC,  59-61. 

Law  and  date,  59. 

Kinds  of  patents,  59. 

Previous  examination,  59. 

Duration,  59. 

Government  fees,  60. 

Documents  required,  60. 

Working,  61. 

Assignment,  61. 

Specification,  &c.,  inspection  and 
publication  of,  61. 

Infringements,  61. 

Other  legal  provisions,  61. 
ARRANGEMENT  OF  PARTS.  (See  Com- 
bination.) 
ART.  (See  Abstract  Principle,  Effect) 

Definition  of,  231,  232. 

When  patentable,  233,  234. 

Must  be  practical,  233. 

Lost,  252. 

ARTICLE.  (See  Manufacture.) 
ASSIGNEE.  » 

Patent  may  issue   to,  275,  276, 
623. 

Correspondence  to  be  in  the  name 
of,  277. 

Who  is  an,  278. 

Rights  of,  unaffected  by  a  reissue, 
557. 

Entitled  to  the  benefit  of  a  dis- 
claimer, 612. 


INDEX. 


677 


ASSIGNEE  (continued.') 

Rights  of,  under  extension,  599. 

Rights  of,  under  extension  by  act 
of  Congress,  603. 

Cannot  apply  for  an  extension, 
585. 

Form  of  petition  for  an,  279. 

May  apply  for  reissue  if  the  in- 
ventor be  dead,  556. 

Form  of  petition  for  reissue  by, 
582. 

Form  of  oath  by,  583. 

Of  a  partial  interest,  276. 

Of  alien  inventors,  633. 
ASSIGNMENT.  (See  Assignee,  Licensee, 
British  Assignments,  French 
Assignments.) 

Before  letters  patent  are  obtained, 
14,  274-279,  629. 

Patent  may  issue  to  assignee  in 
case  of,  13,  274,  276. 

Should  be  recorded  before  patent 
issues,  277. 

After  rejection  of,  application  val- 
•  id,  275. 

Of  incomplete  invention,  only  val- 
id as  a  contract,  276. 

Stamp  required,  278,  627. 

Requires   no   particular  form  of 
words,  278,  624. 

Oath  and  application  to  be  by  in- 
ventor in  case  of,  318. 

Interests  which  may  be  conveyed 
by,  624. 

Recording  of,  277,  626. 

Unrecorded,  good  as  between  the 
parties,  627,  628. 

Distinction  between,  and  license, 
629, 635. 

Effect  and  construction  of,  631. 
57* 


ASSIGNMENT  (continued.} 
Whether  a  particular  instrument 

amounts  to,  624,  i!2o,  631. 
Implies  no  warranty  of  title,  632. 
Of  extended  term,  599. 
In  case  of  reissue,  556-558. 
Forms  of,  633. 
Copy  of  evidence,  520. 
ASSISTANT  COMMISSIONER. 
How  appointed,  1. 
Duties  of,  5. 

ATTORNEYS.    (See    Power  of  Attor- 
ney.) 
Correspondence  only   with,   261, 

281. 
Conflicting   interests   represented 

by  the  same,  262. 
Who  may  appear  as,  281. 
Patent  Office  not  responsible  for 

acts  of,  281. 

Commissioner  may  refuse  to  recog- 
nize, 6,  281. 
AUSTRIA,  61-67. 

Law,  date,  and  where  recorded,  62. 
•Kinds  of  patents,  62. 
Previous  examination,  62. 
Duration,  62. 
Government  fees,  62. 
Documents    required,  and  where 

to  be  left,  63. 

Working  and  prolongation,  63. 
Assignments,  63. 
Other  legal  provisions,  63. 
Specifications,     inspections,     and 

copies  of,  63. 

List  of  patents  delivered,  64. 
Specifications  published,  64. 
Proceedings  to  obtain  a  patent,  64. 
Form  of  petition,  65. 
BADEK,  (Grand  Dnchy  of,)  67,  68. 


678 


INDEX. 


BAVARIA,  68-71. 

Law,  date,  and  where  recorded, 

68. 

Kinds  of  patents,  68. 
Previous  examination,  69. 
Duration,  69. 
Annulment,  69. 
Government  fees,  69. 
Documents    required,  and  where 

to  be  left,  69.  • 
Working  and  extension,  69. 
Assignments,  69. 
Other  legal  provisions,  70. 
Specifications,      inspection,     and 

copies  of,  70. 

List  of  patents  delivered,  70. 
Specifications  published,  70. 
Proceedings  to  obtain  a  patent, 

70. 
BELGIUM,  71-77. 

Law,  date,  and  where  recorded, 

71. 

Kinds  of  patents,  71. 
Previous  examination,  71. 
Duration,  71. 
Government  fees,  71. 
Documents    required,  and  where 

to  be  left,  72. 

Working  and  extension,  72. 
Assignments,  72. 
Specifications,      inspection,     and 

copies  of,  72. 

List  of  patents  delivered,  73. 
Specifications  published,  73. 
Originals  of  specifications,  73. 
Jurisdiction  and    legal  proceed- 
ings, 73. 

Causes  of  nullity,  73.  '^ 

Proceedings  to  obtain  a  patent, 

73. 


BELGIUM  (continued.) 

Declaration,  75. 

Form  of  a  patent,  76. 

Form  of  transfer  of  patent,  77. 

Form  of  certificate  of  reception 
of  a  patent  by  transfer,  77. 
BILL  IN  EQUITY.  (See  Equity.) 
BOND. 

Official,  of  Commissioner,  4. 

Of  chief  clerk,  4. 

CANADA,  112-114. 

Patent  Office  constituted,  113. 

Seal,  113. 

Rules  and  regulations,  114. 

Deputy  Commissioner,  114. 

Report,  114. 
Who  may  obtain  Patents,  115-117 

Who  may  obtain  a  patent,  115. 

An  original  inventor,  having 
foreign  patent,  must  apply 
within  six  months,  116. 

Right  of  assignment,  116. 

A  rejjjdent  may  obtain,  but  not 
vend,  a  patent,  116. 

Joint  applications  to  be  made 
by  joint  inventors,  and  pat- 
ents issue  accordingly,  116. 
Conditions  and  Formalities,  117- 
119. 

Oath  or  affirmation  as  to  inven- 
tion must  be  made  by  appli- 
cants, 117. 

Applicants  to  elect  a  domicil  in 
Canada,  117. 

Nature  of  petition  and  specifi- 
cations, 118. 

Drawings  to  be  furnished  in 
duplicate,  with  references, 
118. 


INDEX. 


CANADA  (continued.') 

Working  model  of  invention, 
or  samples  of  ingredients,  if  a 
discovery,  required,  119. 
Contents,  Duration,  Surrender,  Re- 
issue of  Patents,  and  Dis- 
claimers, 120-123. 

Contents  of  the  patent  and 
powers  granted  thereby,  120. 

Duration  of  patent  120. 

Patent  to  be  examined  and  cer- 
tified by  minister  of  justice 
before  delivery,  121. 

New  patent  in  case  of  error,  121. 

Patentee  may  make  disclaimer, 

122. 

Assignment  and  Infringement  of 
Patents,  123-125. 

Government  of  Canada  may  use 
any  patented  invention  by 
making  reasonable  compensa- 
tion, 123. 

Patents  to  be  assignable,  123. 

Penalty  for  infringement,  124. 

Prosecution  for  infringement, 
124. 

Court  may  discriminate  in  cer- 
tain cases,  125. 

Defense  in  such  cases,  125. 
Nullity,  Impeachment,  and  Void- 
ance  of  Patents,  126-128. 

Patents  to  be  void  in  certain 
cases,  or  valid  for  only  part, 
126. 

Patents  to  be  conditioned  on 
manufacture  in  Canada  with- 
in three  years ;  importing  the 
article  patented,  126. 

Proceedings  for  impeachment  of 
patent,  127. 


CANADA,  (continued.} 

Certificate  of  judgment  voiding 
patent  to  be  entered,  128. 

Judgment  to  be  subject  to  ap- 
peal, 128. 

Patents  Issued  under  former  Laws, 
128,  129. 

Existing  provincial  patents  to 
remain  in  force,  128. 

Handing  over  records  of  patent 

offices  to  Commissioner,  129. 
Tariff  of  Fees,  129-131. 

With  reference  to  fees,  how  and 
to  whom  to  be  paid,  129. 

The  Commissioner  to  have  the 
power  of  returning  one-half 
of  the  Government  fee, 
131. 

Miscellaneous      Provisions,     131- 
137. 

Applicant  may  file  a  caveat, 
132. 

Causes  why  Commissioner  may 
refuse  to  grant  a  patent, 
132. 

Commissioner  to  notify  appli- 
cant of  rejection,  133. 

Appeal  to  Governor  in  Council, 
133. 

Interfering  applications,  133. 

Documents  in  Patent  Office  to 
be  open  to  inspection  of  the 

*    public,  except  caveats,  134. 

Clerical  errors,  134. 

Lost  or  destroyed  patent  may 
be  replaced,  134. 

Use  of  patented  inventions  al- 
lowed in  foreign  ships,  134. 

Patent  not  to  affect  previous 
purchaser  of  invention,  135. 


680 


INDEX. 


CAK ADA  (continued.) 

Patented  articles  to  be  stamped 

with  date  of  patent,  135. 
Punishment    of     parties    who 

stamp  an  article  as  patented 

when  such  is  not  the  case, 

135. 
Punishment    of    offenders    for 

making  false  entry  or  copy, 

136. 

All  acts  inconsistent  with  pres- 
ent act  repealed,  136. 
Title  of  act:  The  patent  act  of 

1869,  137. 
Act  to  commence  and  take  effect 

July  1,  1869,  137. 
Rules,  Regulations,  and  Forms  of 
the  Canadian  Patent  Office, 
137-147. 

Date  of  approval,  137. 
Personal  appearance,  138. 
Applicant  responsible,  138. 
Correspondence,  138. 
Clerical  requirements,  138. 
Address,  138. 
Forms,  138. 
Petition,  138. 
Joint  application,  139. 
Oath,  139. 
Specification,  140. 
Drawings,  141. 
Extension,  142. 
Form  of  patent,  143. 
Model,  144. 
Fees,  144. 
Time  for  perfecting  application, 

144. 
Separate  inventions  cannot  be 

claimed  in  one  application, 

146. 


CANADA  (continued) 
Protest,  115. 
Cases  of  doubt,  145. 
Caveat,  145. 
Intricate  cases,  146. 
General  remarks,  146. 
CAPE  OF  GOOD  HOPE,  147- 149. 
Law,  date,  and  where  recorded, 

147. 

Kinds  of  patents,  147. 
Duration,  147- 
Government  fees,  147. 
Documents  required,  and  where 

to  be  left,  148. 
Assignments,  148. 
Specifications  and  drawings, 

148. 

Other  legal  provisions,  148. 
CAVEAT. 

Who  may  file,  16,  207. 
When  alien  may  file,  17,  208. 
For  incomplete  invention,  207. 
What  may  be  set  forth  by,  207, 

209. 
To    be    preserved    in    secrecy, 

207. 

Term  for  which  operative,  208. 
May  be  renewed,  208. 
Secures  notice  of  interfering  ap- 
plication, 208,  210. 
Caveator  to  complete  his  applica- 
tion after  notice,  208. 
Not  entitled  to  notice  of  pending 

application,  208. 
Notice    to    Commissioner    only, 

216. 

Need  not  contain   a  specific  de- 
scription, 209.      . 
Need  nob  be  accompanied  by  a 
model,  209. 


INDEX. 


681 


CAVEAT  (continued.} 
Purpose  and  office  of,  209. 
Rights  secured  by,  208,  210. 
Papers  not  to  be  withdrawn,  215. 
Copies  of,  furnished,  215. 
Copies  of  evidence,  26,  497. 
Effect     of,    upon   a    subsequent 

patent,  213. 
How  far  evidence  of  invention, 

215,  216,  520. 

Powers    and  duties   of  Commis- 
sioner as  to,  208,  216. 
Form  of  petition  for,  216. 
description  attached  to,  217. 
of    oath     accompanying,    217, 

323. 

Fee  payable  on  filing,  207. 
CERTIFICATE. 

Trade-mark,  450. 

Of  officer  concerning  depositions, 

504. 

Forms  of,  505. 
CEYLON,  149,  150. 

Law,  date,  and  where  recorded, 

149. 

Kinds  of  patents,  149. 
Duration,  149. 
Government  fees,  149. 
Documents,   where    to    be    left, 

149. 

Specification,  inspection,  and  co- 
pies of,  149. 
Assignments,  149. 
Other  legal  provisions,  150. 
CHANCERY.  (See  Equity.) 
CHANGE.  (See  Novelty,  Improvement, 

Combination.) 
CHEAPNESS.  (See  Utility.) 
CHEMICAL  COMPOSITION.  (See  impo- 
sition of  Matter.) 


CIRCUIT  Court.  (See  Action  at  Law, 

Subpena.) 

CLAIM.  (See  Specification.) 
CLASSIFICATION. 

Of  subjects  of  invention,  324,  329. 
Of  models  and  specimens,  6. 
CLERKS. 
Of  United  States  courts  to  issue 

subpena,  18,  19,  495. 
Of  the  Patent  Office,  2,  3. 
Incapable  of  acquiring  interests 

in  patents,  6. 

COMBINATION.     (See    Improvement, 
Double  Use,  Equivalents,  Iden- 
tity.) 
What  constitutes  a  technical,  295, 

296,  535,  536,  537. 
The  word  "  arrangement "  synon- 
ymous with,  295. 
May  include  an  element  not  de- 
scribed, 289. 

Of  old  parts  patentable,  535. 
Substitution   of    a    substantially 
different  element  constitutes 
a  new,  243. 

COMMISSIONER  OF  PATENTS. 
Appointed  by  the  President,  2. 
Salary  of,  2. 
Official  bond  of,  4. 
Powers,  duties,  and  discretion  of,  4. 
as  to  caveats,  208,  216. 
in  issuing  patents,  8,  362,  269. 
in  determining  as  to  utility,  231. 
as  to  the  division  of  an  inven- 
tion, 255. 
as  to  dispensing  with  model,  315, 

428. 

as  to  the  specification,  299. 
respecting  examiners  -  in  -  chief, 
351. 


682 


INDEX. 


COMMISSIONER  (continued.) 

in  regard  to  rehear  ing  after  ap- 
peal, 358,  359. 

in  case  of  appeal  to  the  supreme 
court  of  the  District  of  Colum- 
bia, 381,  387,  407. 
in  cases  of  reissue,  570. 
in  cases  of  extension,  598. 
as  to  attorneys,  281. 
in  cases  of  mandamus,  409-427. 
to  make  rules,  7,  18,  495,  498. 
All  correspondence  in  the  name  of, 
'  260,  261. 

to  and  from  free,  4,  262. 
Appeal   from   examiners-in-chief 

to,  20,  365-377. 
time  of  hearing  on,  366. 
motion  on,  366. 
oral  argument  on,  366. 
continuance  of  cases  on,  366. 
questions  of  fact  on,  367. 
case  may  be  remanded  after,  372. 
form  of,  377. 
action  of  former  Commissioner 

not  reversed  on,  366. 
Appeal  from  primary  examiner  to, 
340,  373.  (See  Examination.) 
Appeal  from,  to  the  supreme  court 
of  the  District  of  Columbia, 
377,  408. 

COMMISSIONER,  Acting.    (See  Assist- 
ant Commissioner.) 
COMMON  USE.  (See  Abandonment.) 
COMPOSITION  OF  MATTER.  {See  Utili- 
ty, Process,  Manufacture^ 
What  is  included  by  the  term,  243. 
Substitution  of  ingredients  in,  244. 
When  patentable,  244. 
Variable  proportions  need  not  be 
stated  in  a  specification  for,  290. 


CONCEALMENT,    (fraudulent.)    (See 

Fraud.) 
CONGRESS. 

Patent  may  be  extended  by  a  spe- 
cial act  of,  602.  (See  Extension.) 
CONSTRUCTION.  (See  Evidence. ) 

Of  patent  in  connection  with  the 
specification,  286. 

Of  the  specification.    (See  Specifi- 
cation.) 

Of  reissued  patent.    (See  Reissues.) 

Of  extended  patents.    (See  Exten- 
sion.) 

Of  assignments,. &c.    (See  Assign- 
ments.) 

Of  the  words    "substantially   as 
described,"  293. 

Of  the  word  "arrangement,"  in 

the  claim,  295. 
CONSUL.  (See  Oaths.) 
CONTINUING     APPLICATION.     (See 
Abandonment.) 

For  letters  patent,   what  consti- 
tutes, 268. 

CONTRACT.  (See  Assignment,  License.) 
COPIES.  (See  Evidence,  Fees.) 

Of  caveat  papers  furnished  to  cav- 
eator,  215. 

To  be  evidence,  26. 

Of    Patent   Office   records   to   be 
evidence,  26,  519. 

To  be  furnished  on  application.310. 

Commissioner    cannot    refuse   to 
furnish,  310. 

Of  foreign  patent  to  be  evidence, 
26,  527,  534. 

Of  drawings,  cost  of,  309. 

Of  specification,  drawings,  and 
references  on  rejection  of  ap- 
plication, 334. 


INDEX. 


683 


COPIES  (continued.) 

On  appeal  to  supreme  court  of  D. 
C.,  appellant  to  furnish,  303. 
Applicant  for  the  registry  of  trade- 
mark  to  furnish   five  dupli- 
cates, 448. 
Of  testimony  in  contested    cases 

may  be  obtained,  501. 
COPYRIGHT. 

Librarian  of  Congress  to  have  con- 
trol of  matters  appertaining 
to,  42-47. 
to  give  bond,  42. 
to  furnish  record  under  seal,  42. 
to  make  annual  report,  42. 
to  record  assignments  of,  44. 
to  record  copyright  books,  45. 
Who  may  obtain  a,  43. 
What  may  be  protected  by,  43. 
Term  for  which  granted,  43. 
Extension  of  term  of,  43. 
Applicant  for,  to  forward  copy,  44. 
may  send  copyright  matter  free 

of  postage,  46. 

liable  to  penalty  for  non-deliv- 
ery, 46. 

entitled  to  a  copy  of   the  re- 
cord of,  45. 
may   demand    a    receipt    from 

postmaster,  46. 

Fees  payable  for  recording,  45. 
Copies  under  seal,  45. 
Recording  assignment  of,  45. 
Copies  of  assignment,  45. 
Assignment  of,  44,  661. 
to  be  recorded,  44,  661. 
form  of,  661. 

Action  for  infringement  of,  47-52. 
not  maintainable  unless  notice 
is  inserted,  47. 


COPYRIGHT  (continued.) 
Of  a  book,  48. 
Of  maps,  engravings,  photographs, 

Ac.,  48. 

Of  dramatic  compositions,  49. 
Of  manuscripts,  49. 
Pleading  in,  50. 
Cognizable  by  circuit  court,  50. 
Appeal    to    the  Supreme  Court, 

50-58. 

Full  costs  to  be  allowed,  51. 
Notice  to  be  inserted  on  title  page, 

47. 

Penalty  for  false  notice  of,  47. 
to  be  recovered  by  action,  47. 
limitation  of  action  for,  50. 
Transfer  of  books,  &c.,  relating  to, 

51. 

CORRECTION.  (See  Reissue,  Disclaim- 
er, Examination,  Clerical  Error.) 
CORRESPONDENCE.  (See  Application, 

Examination  ) 
With    the  Patent  Office  free  ot 

postage,  262. 

Must  be  in  the  name  of  Commis- 
sioner, 261. 
When  power  of  attorney  has  been 

filed,  261. 

Should  be  in  writing,  262. 
In  case  of  assignment,  277. 
Information  not  furnished  by,  263. 
COSTS.  (See  Disclaimer.) 
COURT.  (See  Action  at  Law,  Equity, 
Sabpena,  Supreme  Court  of 
District  of  Columbia.) 
CUBA,  PORTO  Rico,  AND  THE  PHIL- 
IPPINE ISLANDS,  150, 151. 
Law,  date^and  where  recorded, 

150. 
Kinds  of  patents,  150. 


684 


INDEX. 


CUBA,  &c.,  (continued.) 
Duration,  150. 

Documents,  where  to  be  left,  151. 
Government  fees,  151. 
Specification,  inspection  of,  151. 
Assignments,  151. 
Working,  151. 

DAMAGES.  (See  Action  at  Law.) 
DEATH.     (See    Administrator,    As- 
signee.) 

DECLARATION.  (See  Action  at  Law.) 
Form  of,  in   action  for   infringe- 
ment, 668. 

Of  parties.  (See  Evidence.) 
DEDICATION.  (See  Abandonment.) 
DEED.  (See  Assignment.) 
DEFENSE.  (See    Action     at     Law, 

Equity.) 

DEPOSITIONS.  (See  Evidence,  Exten- 
sion, Interference,  Oath.) 
Commissioner  may  establish  rules 

for  taking,  495,  498. 
Before  whom  taken,  495. 
Clerk  to  issue  subpena,  495. 
Penalty  for   refusing  to  testify, 

495. 
Notice  to  be  given   to  opposite 

party  before  taking,  496. 
To  be  sealed  up  and  entitled,  497. 
Ex  parte  testimony,  495. 
Notice  of  objection  to,  468. 
Technical  objection  to,  501. 
Service  of  notice  for  taking,  499. 
Eequisites  of  notice    for  taking, 

500. 

To  be  taken  in  answer  to  inter- 
rogatories, 500. 

Magistrate's  certificate  appended 
to,  500. 


DEPOSITIONS  (continued. ) 
Parties  may  have  access  to,  501. 
cannot  be  taken  before  inter- 
ested parties,  501. 
May  be  received  by  consent  of 

parties,  502. 
Taken  on  a  former  interference 

admissible,  502. 
Assignment  of  time  for  taking, 

503. 

Postponement  of  taking,  503. 
Form  of  notice  of  taking,  503. 
Form  of,  504. 

Form  of  certificate  attached  to  504 
DESCRIPTION.    (See  Specification,  Re- 
issue.) 
Caveat  need  not  contain  specific, 

209. 

DESIGNS. 
Patents  for,  427-445. 

citizens  and  aliens   may  take, 

427. 

subject-matter  of,  427,  428. 
terms  of,  428. 
applicant  to  elect  on  application, 

term  of,  437. 

term  of  may  be  extended,  428. 
classification  of,  429. 
what    may    be    embraced    in, 

431. 
trade-mark  not  now  included 

in,  448. 
may  embrace  a  genus  or  class 

of  ornaments,  431. 
may  be  granted  on  account  of 

utility,  435. 

cannot  include  mode  of  opera- 
tion or  construction,  437. 
number  of  claims  allowed  in, 
440. 


INDEX. 


685 


DESIGNS  (continued.) 

Application  for  letters  patent  for, 

428. 
the  same  as  for  other  patents, 

429. 

need  not  generally  be  accom- 
panied by  model,  428. 
may  be  illustrated  by  photo- 
graphs, 429. 

requisites  of  photographs  accom- 
panying, 429. 
no  provision  made  for  use  or 

sale  prior  to,  438. 
application  for   mechanical  in- 
vention cannot  be  changed 
into,  442. 

fee  payable  on  filing,  618. 
form  of  petition  accompanying, 

445. 

form  of  specification  accompany- 
ing. 445. 

form  of  oath  accompanying,  445. 
DIRECTIONS. 

To   persons    skilled    in   the   art. 

(See  Specification.) 
DISCLAIMER.    (See  Action  at  Law, 
Examination,  Extension,  lie- 
issue.) 
When    allowed   and    by    whom 

made,  609,  610. 
To  state  the  interest  of  disclaira- 

ant,  610,  611. 
To  be  in  writing,  witnessed,  and 

recorded,  610. 
To  be  considered  a  part   of   the 

specification,  610. 
A  mode    of   amending    imperfect 

specification,  609-612. 
If   not  filed  before   action,  costs 
not  recoverable,  610,  614. 
58 


DISCLAIMER  (continued.) 

Effect  of  delay  in  filing,  613. 

Inures  to  the  benefit  of  assign- 
ees, 612, 

Cannot  affect  prior  grantee,  012. 

Owner  of  sectional  interest  may 
file,  612. 

Effect   of,  upon    actions   for  in- 
fringement, 610,  613, 614. 

Form  of,  6"  15. 

DISCOVERT.  (See  Abstract  Principle, 
Art,  E/ect.) 

Meaning  of,  judicially  ascertain- 
ed, 226. 

To  be  patentable,  must  be  re- 
duced to  practice,  227. 

Of  a  lost  art  patentable,  252. 
DOUBLE  USE.  (See  Novelty.) 
DRAUGHTSMEN.  (See  Clerk.) 

What  constitutes,  221,  222. 
DRAWINGS  (See  Copies,  Specification, 
Reissue. ) 

To    accompany    caveat    papers, 
209. 

Application   for    patent   accom- 
panied by  one  copy  of,  308. 

A  part  of  thespecification,  286, 308. 

To  be  attested  by  two  witnesses, 
308. 

May  be  signed  by    inventor   or 
attorney,  308. 

Patent  Office   requisites   concern- 
ing, 308,  309. 

Patent  Office  to  furnish  copies  of, 
309,  310. 

Cost  of  copies  of,  309. 

Relation  of,  to  the   specification, 
308,311. 

May  be   resorted  to  to  aid    the 
description,  311. 


686 


INDEX. 


DRAWINGS  (continued.) 
How   described    in   specification, 

312,  214. 

Manner  of  lettering,  312,  313. 
Use  of  dotted  lines  in,  314. 

EFFECT.  (See  Abstract  Principle, 
Art,  Double  Use,  Novelty, 
Utility.) 

Alone  not  patentable,  220. 
May  become  the  test  of  inven- 
tion, 221. 

EMPLOYEES.  (See  Clerks.) 
ENTIRETY.  (See  Unity.) 
EQUITABLE  TITLE.  (See  Assignment.) 
EQUITY. 

Suits  in,  cognizable  in  the  United 

States  circuit  courts,  24. 
Proceedings  in,  to  prevent  viola- 
tion of  patent  right,  25. 
Damages  upon  decree  in,  25. 
Appeal  from  decree  in,  to  Supreme 

Court,  25. 

Proceedings  in,  in  case  of  interfer- 
ing patents,  26,  27. 
Remedy  by  bill   in,    in    case   of 
refusal    of  Commissioner    to 
grant  a  patent,  21,  22. 
Forms  of  procedure  in,  662,  667. 
Form  of  bill  in,  662. 
Subpena  to  appear  and  answer,  665. 
Precept  for  appearance,  666. 
Motion  for  leave  to  file  supple- 
mental bill,  666. 
Answer,  666. 
Replication,  667. 

Notice  for  proof  under  oral  exam- 
ination, 667. 

EQUIVALENTS.    (See    Mechanical 
Equivalents.  .         ... 


EVIDENCE.  (See  Deposition,  Oaths.) 

Model  may  be  used  as,  316. 

Presumptive  divided  into  two 
classes,  505. 

Piesumption  in  regard  to  public 
officers,  509. 

Of  knowledge  of  preceding  pat- 
ent, 510. 

That  the  patentee  is  the  first  in- 
ventor, 510,  512. 

That  reissued  patent  is  for  the 
same  invention  as  the  origi- 
nal, 510. 

That  the  patent  was  lawfully  is- 
sued, 511,  512. 

Of  acquaintance  with  the  state 
of  the  art,  511. 

That  the  constructor  of  a  ma- 
chine is  the  inventor,  511, 
512. 

As  to  oath  of  invention,  323. 

Parol  and  secondary,  517-519. 

Patent  Office  records  to  be,  519, 
520. 

On  appeal  to  the  supreme  court  of 
District  of  Columbia,  383. 

Of  abandonment,  520,  521. 

Of   priority   of    invention,   522, 
527. 

Of  prior  knowledge  or  use  in  a 
foreign  country,  527-535 

Copy  of  foreign  patent  to  be,  26. 

Of  novelty  and  utility,  535-546. 

Of  declaration  and  acts  of  par- 
ties, 513-516. 

Of  third  parties,  516. 

Competency   of   witnesses,    546- 
550. 

Of  parties  in  patent  causes,  546- 
547. 


INDEX. 


687 


EVIDENCE  (continued.) 

In  cases  before  the  Patent  Office, 

547. 
Of  witnesses  in  interference  cases, 

548. 

Of  experts,  549,  550. 
EXAMINATION. 

Of  officers  of  the  Patent  Office  on 

appeal    to    Supreme    Court, 

381. 
Of  application  for  letters  patent, 

12,  330-342. 
Commissioner  shall   cause,  to   be 

made,  330. 
To  be  made  within  two  years  after 

filing  petition,  300. 
Duties   of  primary  examiner   on, 

342. 
To  be  made  in  the  order  in  which 

applications    are    completed, 

331. 

Cases  which  take  precedence  on,331 . 
Attendance  of  applicant  unneces- 
sary on,  341. 
References  given  if  any  claim  is 

rejected  on,  333. 
Division  of  the  application  may 

be  required  on,  339. 
Correction  of  specification  may  be 

required  on,  339. 
Closed  on  appeal,  337. 
Will  be  reopened  if  amendments 

are  allowed  on  appeal,  337, 

372,  373. 
On  rejection,  applicant  may  amend 

specification,  334. 
*may  demand  specific  references, 

334. 
may  demand  a  re-examination, 

336. 


EXAMINATION  (continued.) 

may  amend  as  often  as  new  ref- 
erences are  given,  335,  336. 
may  demand  copies  and  draw- 
ings, 334. 

cannot  require    the  return  of 
specification  for  amendment  i 
341. 
may  obtain  copy  of  specification, 

341. 
may  appeal  to  the  board  of  ex- 

aminers-in-chief,  340   352. 
may  appeal  directly  to  the  Com- 
missioner in  certain  cases,  340, 
353. 
may  file  special    amendments, 

338. 
requirements    of   amendments, 

338. 

Form  of  amendment  of  specifica- 
tion, 343. 

EXAMINERS,  (primary.)  (See  Exam- 
ination, Reissue,  Extension.) 
Appointed  by  the  Secretary  of  the 

Interior,  2. 

Divided  into  three  classes,  2. 
Salary  of,  3. 

Executive,  ministerial,  and  judi- 
cial functions  of,  343. 
May  be  examined  on  appeal  to  the 
supreme    court     of     D.    C., 
381. 

EXAMINERS-IN-GHIEF. 
Appointed  by  the  President,  2. 
Salary  of,  2. 
Duties  of  5,  349,  365. 
Resume"  of  the  laws  constituting, 

349. 

To  be  governed  by  the  rules  of 
the  Commissioner,  351. 


688 


INDEX. 


EXAMHTERS-IN-CHIEF  (continued.) 
When  applicant  may  appeal  to, 

20,  352. 
Appeal  to,  is  from  the  judicial 

acts  of  examiner,  352. 
cannot  be  taken  from  executive 

acts,  353,  354,  357,  361. 
from  adverse  decisions  only,  is 
from  the  action  of  the  exami- 
ner, not  from  his  reasoning, 
357. 
rehearing  on,  only  by  order  of 

Commissioner,  358. 
examiner  cannot  reopen  a  case 

after,  359. 

case  may  be  remanded  for  fur- 
ther examination  after,  360. 
petition  on,  to  set  forth  reasons, 

364. 

amendment  after,  337. 
examination  closed  before  pri- 
mary examiner  after,  337. 
form  of,  365. 
When  Commissioner  not  bound  by 

decision  of,  362. 

Appeal  to  Commissioner  from  de- 
cision of,  365. 
EXECUTION. 
Patented  machine  may  be  sold  on, 

632. 

Ex  PARTE.  (See  Evidence.) 
EXPERIMENT.  (See  Novelty.) 

Inventor  may   avail  himself   of 

prior,  252. 

Unsatisfactory,  evidence  of  aban- 
donment, 521. 
EXTENSION. 
Statute  provisions  concerning,  30, 

31.  32. 
Resume1  of  the  law  concerning,  584. 


EXTESSION  (continued.) 

Patentee  may  apply  for,  585. 
Assignee  cannot  apply  for,  585. 
When  attorney  may  apply  for,  586. 
Administrator  may  apply  for,  591. 
Duty  of  party  applying  for,  585. 
Publication  of  notice  of  applica- 
tion for,  591. 
Application  for,  to  be  referred  to 

primary  examiner,  591. 
"When  patent  has  been  divided  on 

reissues,  593. 

Any  person  may  oppose,  591. 
Party  opposing,  to  give  notice,  592. 
must  file  reasons  of  opposition, 

592. 

In  cases  of  opposition  to,  testimo- 
ny may  be  taken,  592. 
on  whom  notice  to  take  testi- 
mony may  be  served,  592. 
Assignment  of  time  on  application 

for,  593. 

Hearing  in  cases  of,  593. 
Applicant  for,  to   furnish   state- 
ment under  oath,  593, 
Questions  considered  on  applica- 
tion for,  594. 
Proof  required  on  application  for, 

594. 

as  to  novelty,  595. 
as  to  value  and  importance,  596. 
as  to  remuneration,  596. 
as  to  policy,  597. 
Granting  the,  597. 
To  be  for  seven  years  from  expi- 
ration of  first  term,  598. 
Effect  of,  598. 

Action  of  Commissioner  in  grant- 
ing, not  re-examinable,  598. 
Eights  of  assignees  on,  599-602. 


LSDEX. 


689 


EXTENSION  (continued.) 

By  act  of  Congress,  603. 

By  special  act  of  Congress,  602. 

Form  of  petition  for,  by  patentee, 
604. 

Form  of  petition  for,  by  adminis- 
trator, 604. 

Form  of  statement  of  account  on, 
604. 

Form  of  oath  by  patentee,  606. 

Form  of  oath  by  execntor,  606. 

Form  of  reasons  of  opposition  to, 
606,  607. 

Form  of  certificate  of,  608. 

Form  of  oath  to  loss  of  letters 
patent,  608. 

Of  patents  for  designs,  428. 
EXPERTS.  (See  Evidence.) 

Who  are,  541. 

FALSE  MARKING. 

Penalty  for,  15,  16. 
FEES  OF  THE  PATENT  OFFICE. 
To  be  paid  in  advance,  617. 
Tariff  of,  618. 

On  issuing  patent,  to  be  paid  with- 
in six  months,  343,  619. 
How  may  be  paid,  619. 
Paid  by  mistake  to  be  refunded, 

620. 
FOREIGN  INVENTOB. 

May  obtain  a  United  States  pat- 
ent, 10,  219. 

When  may  file  a  caveat,  208. 
Form  of  oath  by,  318. 
FOREIGN  PATENTS. 
Not  a  bar  to  obtaining  a  patent  in 

the  United  States,  219. 
When  will  avoid  a  United  States 
patent,  254. 
58* 


FOREIGN  PATENTS  (continued.) 
United  States  patent  expires  with, 

527-535. 
Oath  by  inventor  who  has  taken 

out,  318. 
Date  of,   how  determined,   527- 

535. 

The  Argentine  Republic,  59-61. 
Austria,  61-67. 
The  Grand  Duchy  of  Baden  and 

Petty  States  of  Germany,  67, 

68. 

Bavaria,  68-71. 
Belgium,  71-77. 

Great  Britain  and  Ireland,  77-84. 
Analysis  of  'the   British  Patent 

Laws,  84-102. 
Forms  and  proceedings  to  obtain 

a  patent,  102-112. 
Patent  Laws  of  the  Dominion  of 

Canada,  112-114. 
Who   may  obtain   patents,  115- 

117. 
Conditions  and  formalities,  117- 

119. 

Contents,  duration,  surrender,  re- 
issue   of    patents,   and    dis- 
claimers, 120-123. 
Assignment  and  infringement  of 

patents,  123-125,  649-654. 
Nullity,  impeachment,  and  void- 

ance  of  patents,  126-128. 
Patents  issued  under  former  laws, 

128,  129. 

Tariff  of  fees,  129-131. 
Miscellaneous  provisions,  131-137. 
Rules,  regulations,  and  forms  of 

Canadian  Patent  Office,  137- 
-147. 
Cape  of  Good  Hope,  147-149. 


690 


INDEX. 


FOREIGN  PATENTS  (continued.) 

Ceylon,  149,  150. 

Cuba,  Porto  Rico,  and  the  Philip- 
pine Islands,  150,  151. 

France,  151-156. 

Greece,  156. 

British  Guiana,  156-158. 

India,  158-164. 

Italy,  164-169. 

Jamaica,  169-171. 

Mauritius  and  Dependencies,  171, 
172. 

Mexico,  172,  173. 

The  Netherlands,  173-175. 

Newfoundland,  175-177. 

New  South  Wales;  177,  178. 

New.  Zealand,  178,  179. 

Portugal,  179-181. 

Prussia,  181-183. 

Queensland,  183. 

Russia,  183-185. 

Saxony,  186,  187. 

Spain,  188-191. 

Sweden,  191-193. 

Tasmania,  193-195. 

Trinidad,  195. 

Victoria,  (Australia,)  195-199. 

West  Indies,  (Dutch,)  200,  201. 

Wurtemberg,  201-203. 
FOREIGN  PUBLICATION. 

When,  will  avoid  a  patent,  252- 

254, 527-535. 
FORM. 

Change  of,  when  patentable,  238. 
FORMS. 

Of  petition  for  letters  patent,  271. 

Of  petition  for  patent  by  inventor 
for  assignee,  279. 

Of  petition  for  patent  by  joint  in- 
ventors, 274. 


FORMS  (continued.) 

Of  petition  for  patent  by  adminis- 
trator, 280. 

Of  petition  for  patent  by  executor, 
280. 

Of  petition  with  power  of  attorney. 
282. 

Of  power  of  attorney,  283. 

Of  revocation  of  power  of  attorney, 
284. 

Of  specification  for  a  machine,  304. 

Of  specification  for  a  process,  306. 

Of  specification  for  a  composition 
of  matter,  30(3. 

Of  oath  on  application  for  patent, 
323. 

Of  amendment  of  the  specifica- 
tion, 343. 

Of  petition  for  the  renewal  of  an 
application,  345. 

Of  appeal  from  examiner  to  exam- 
iners-in-chief,  365. 

Of  appeal  from  the  examiners-in- 
chief  to  the  Commissioner ,  37 7. 

Of  petition  on  appeal  to  the  su- 
preme court  of  D.  C.,  407. 

Of  certificate  of  Commissioner  on 
appeal  to  supreme  court  of  D. 
C.,  408. 

Of  notice  and  reasons  of,  to  su- 
preme court  of  D.  C.,  408. 

Of  appeal  to  the  supreme  court  of 
D.  C  ,  furnished  by  the  ofiice, 
380. 

Of  oath  on  application  for  patent 
for  a  design,  445. 

Of  petition  for  the  registry  of  trade- 
mark, 449. 

Of  oath  on  the  registry  of  trade- 
mark, 449. 


INDEX. 


691 


FORMS  (continued) 

Of  transfer  of  trade-mark,  450. 

Of  certificate  of  registry  of  trade- 
mark, 450. 

Of  notice  of  taking  testimony,  503. 

Of  deposition,  504. 

Of  certificate  of  officer,  504,  505. 

Of  petition  for  reissue  by  inventor, 

582. 
by  assignee,  582. 

Of  oath  of  applicantfor  reissue,  583. 
assignee,  583. 

Of  petition  for  extension  by  pat- 
entee, 604. 

By  an  administrator,  604. 

Of  statement  of  account,  604. 

Of  oath  by  applicant  for  exten- 
sion, 608. 

Of  reason  of  opposition  to  exten- 
sion, 607. 

Of  disclaimer,  615. 

Of  United  States  letters  patent, 
616. 

Of  assignments,  633,  634. 

Of  license,  640,  641. 

Of  British  assignment!?  649-654. 

Of  French  assignments,  658-660. 

Of  assignments  of  copyright,  661. 

Of  bill  in  equity,  662. 

Of  subpena  to  appear  and  answer, 
665. 

Of  precept  of  appearance,  666. 

Of  motion  for  leave  to  file  supple- 
mental bill,  666. 

Of  answer,  666. 

Of  replication,  667. 

Of  notice  for  proofs  under  oral  ex- 
amination, 667. 

Of  declaration,  668. 

Of  plea  and  special  notice,  670. 


FRANCE,  151-156. 

Law,  date,  and  where  recorded, 

151. 

Kinds  of  patents,  152. 
Previous  examination,  152. 
Duration,  152. 
Government  fees,  152. 
Documents  required,  and  where 

to  be  left,  152. 

Working  and  prolongation,  152. 
Assignments,  152,  655,  660. 
Specifications,     inspection,    and 

copies  of,  153. 

List  of  patents  delivered,  153. 
Specifications  published,  153. 
Originals  of  specifications,  (mo- 
dels, 153.) 
Jurisdiction,    local   proceedings, 

153. 
Proceedings  to  obtain  a  patent, 

153. 
Form  of   French  letters  patent, 

155. 

FRANKING  PRIVILEGE. 
Of  Commissioner,  4. 
FRAUD. 

In  the  specification,  300. 
In  the  oath  of  invention,  319, 322. 

GENERAL  ISSUE.  (See  Action  at  Law.) 

GREAT  BRITAIN  AND  IRELAND,  77- 
84. 

Law,  date,  and  where  recorded,  78. 

Kinds  of  patents,  78. 

Previous  examination,  78. 

Duration,  78. 

Stamp  duties  to  be  paid,  78. 

Documents  required  at  the  Pat- 
ent Office,  79. 


692 


INDEX. 


GREAT  BRITAIN,  &c.,  (continued.) 
Assignments  and  licenses,  80  649. 
List  of  patents  at  their  different 

stages,  80. 

Specifications,  disclaimers,  al- 
terations, provisional  specifi- 
cation, assignments,  and  li- 
censes, 80. 

Specifications,  disclaimers,   alter- 
ations, and  indexes,  80. 
Originals  of   specifications,   etc., 

81. 

Free  public  library  of  the  Com- 
missioners of  Patents,  81. 
Commissioners  of  Patents'  Jour- 
nal, 81. 

Infringements,  83. 
Other  legal  provisions,  83. 
Analysis  of  British  Patent  Laws, 

'  84-102. 

Acts  of  Parliament;  rules,  85. 
Commissioners,  85. 
Seal,  86. 

Petition  and  declarations,  86. 
Only  one  invention  to  be  in- 
cluded in  a  patent,  86. 
Copy   of  specification,  &c.,   to 
accompany  application,  86. 
Petitions,   &c.,  to    be    left    at 

office;  size,  87. 
Size  of  drawings,  87. 
Applications  referred,  87. 
Law  officer  may  amend  title,  87. 
Applicant  may  not  amend  pro- 
visional specification,  88. 
Nature  of  invention,  88. 
Fee  on  leaving  petition,  88. 
Provisional  protections,  88. 
Complete  specifications,  88.. 
Fraud,  89.    . 


GREAT  BRITAIN,  &c.,  (continued.) 

Complete  specification  advertised, 
89. 

Complete  specification  stamp,  £5» 
89. 

Notice  to  proceed,  89. 

Notice  to  proceed  advertised,  89. 

Opposition,  90. 

Applications  for  or  against  seal- 
ing, 90. 

Notice  to  proceed  fee  £3,  90. 

Objections  to  be  referred,  90. 

Law  officer  to  decree  cost,  90. 

Warrant  for  sealing  patent,  90. 

Complete  specification  filed,  91. 

Patent  fee  £5 ;  stamp  £5,  91. 

Future  payments,  91. 

Issue  of  letters  patent,  91. 

Issued  three  months  from  war- 
rant, 92. 

Accidental  delay,  92. 

Case  of  death,  92. 

If  lost,  new  patent  may  issue, 
93. 

Date  of  letters  patent,  93. 

Patents  for  foreign  inventions, 
93. 

Foreign  ships,  93. 

Copy  of  drawings,  93. 

Size  of  specifications,  94. 

Size  of  drawings  and  scale,  94. 

Extra  copy  of  specification,  94. 

Documents  to  be  legibly  signed, 
94. 

Period  of  notice,  95. 

Public  inspection  of  documents, 
95. 

Documents  to  be  printed,  95. 

Documents  evidence   in  courts, 
•  96. 


INDEX. 


693 


GEZAT  BRITAIN,  <fec.,  (continued.) 

Chronological  register;  copy  of 
license  may  be  had  and  is 
evidence,  96. 

Number  of  persons  interested, 
96. 

Falsification  of  register,  96. 

Entries  in  registry  expunged,  97. 

Disclaimers,  97. 

Confirmation  of  prolongation, 
98. 

Infringement,  98. 

Judge's  order,  99. 

Taxing  costs,  99. 

Schedules  of  fees  and  stamps,  99. 
Forms  and  Proceedings  to  obtain  a 
Patent,  102-112. 

Form  of  petition,  102. 

How  to  be  written,  and  stamp, 
103. 

Declaration  to  accompany  peti- 
tion, 103. 

Petition  and  declaration,  accom- 
panied by  specification,  104. 

Reference  indorsed  on  petition, 
104. 

Form  of  provisional  specifica- 
tion, 104. 

Form  of  complete  specification, 
105. 

Reference  to  law  officer,  106. 

Notice  to  proceed  to  be  made 
two  months  before  end  of 
provisional  term,  106. 

Form  of  warrant,  107. 

Form  of  letters  patent,  107. 

The  specification,  111. 
GBEECE. 

Government    may    grant    privi- 
leges for  inventions,  156. 


GUIANA,  (British,)  156-158. 
Law,  date,  and  where   recorded, 

156. 

Kinds  of  patents,  156. 
Previous  examination,  157. 
Duration,  157. 

Government  fees,  157.         4 
Documents   required,  and  where 

to  be  left,  157. 
Assignments,  158. 
Originals  of  specifications,  &c., 

158. 
Other  legal  provisions,  158. 

IDENTITY.  (See  Combination,  Double 
Use,  Improvement,  Novelty.) 

Of  principle,  241,  243. 

What     constitutes      substantial, 

242. 

IMPBO^EMENT.    (See  Combination, 
Double  Use,  Novelty.) 

Definition  of,  245. 

When  patentable,  245-247. 

How  set  forth  in  the  specifica- 
tion, 247. 

INCOMPLETE  INVESTION.  (See  Caveat, 
Novelty,  Priority  of  Invention.) 

Subsequent  inventor  may  avail 
himself  of,  248. 

Not  pateutable,  250. 
INDIA,  158-164. 

Law,  date,  and  where  recorded, 
158. 

Kinds  of  patents,  158. 

Duration,  159. 

Government  fees,  159. 

Documents  required,  and  where 
to  be  left,  159. 

Extension,  159. 

Disclaimer,  159. 


694 


INDEX. 


INDIA  (continued.) 

Specification,  inspection,  copies  of, 
159. 

Assignments,  160. 

List  of  patents  delivered,  160. 

Jurisdiction,  160. 

Chief  legal  provisions,  160. 

Proceedings  to  obtain  a  patent, 
161. 

Form  of  petition,  161. 

Form  of  declaration  to  accom- 
pany petition,  162. 

Form  of  declaration  to  accom- 
pany specification,  163. 

Form  of  declaration  by  agent, 
163. 

Form  of  petition,  164. 
INFRINGEMENT.    (See  Action  at  Law, 

JEquity.) 
INJUNCTION. 

To  prevent  the  violation  of  patent 

rights,  25. 

INTENTION.  (See  Abandonment.) 
INTERFERENCE.  (See  Depositions,  Ev- 
idence, Identity.) 

When  declared,  with  a  renewed 
application,  345. 

Duty  of  Commissioner  in  case  of, 
18,  450. 

When  patent  will  issue  to  prior 
inventor  in  case  of,  451. 

Definition  of,  451. 

When,  will  be  declared,  452. 

In  case  one  of  the  parties  has  ob- 
tained a  patent,  454. 

Each  party  to  file  a  statement 
under  oath  upon  declaration 
of,  466. 

Adjudication  by  default  in  case 
of,  467. 


INTERFERENCE  (continued.) 

When,  may  be  set  for    hearing, 
467. 

Appeal  in  cases  of,  467. 

Notice  of  declaration  of,  467. 

Notice  of  declaration  of,  by  publi- 
cation, 468. 

First  applicant  presumed  to  be  the 
prior  inventor,  468. 

Assignment  of   time   for   taking 
testimony,  470. 

Postponement  of  hearing  of,  470. 

Affidavit  required,  471. 

Will  be  tried  before  the  examiner 
in  charge  of  interferences,  471. 

When,  will  be  dissolved,  471. 

Primary    examiner    cannot    dis- 
solve, 472. 

Two  years'  public  use,  473. 

May  be  a  second  time  declared. 
474,  481. 

Withdrawal    of   claims    not    in, 
481. 

No  amendments  received  during, 
482, 

Refiling  of  application  after,  482. 

May  be  opened    to    admit    new 
parties,  482. 

Abandonment  in  cases  of,  483. 

Classes  of,  491. 

INTERFERING  PATENTS.  (See  Equity.) 
INTERIOR  DEPARTMENT. 

Patent  Office  attached  to,  1. 
INVENTION. 

Foreign,  may  be  patented  in  Uni- 
ted States,  219. 

Harmful,  not  patentable,  230. 

Assignment  of,  274-279. 

Embodying    abstract     principle, 
219. 


INDEX. 


695 


ISVEKTION  (continued.) 

Consisting  of  an  application  of  a 
law  of  nature,  219. 

Not    patentable   if  of  an  effect, 
220. 

Of  a  new  application,  221. 

Mechanical  equivalents  not,  222. 

Mere  mechanical  skill  not,  225. 

Distinction  between,  and  discov- 
ery, 226. 

Novelty  of,  227. 

Utility  of,  229. 

Of  an  art,  231. 

Of  a  process,  234. 

Relating  to  machines,  236 

Mere  change  of  form  not,  238. 

Unity  or  diversity  of,  255. 

When,  must  be  included  in  a  sin- 
gle patent,  254-259. 

Specification  of,  284. 

Drawings  of,  308. 

Model  of,  309. 

How    classified    at    the    Patent 
Office,  324-329. 

Examination    of,  on    application 

for  patent,  329-343. 
IKTENTOE. 

Who  is  a  prior,  247. 

He  who  first  perfecta  a  machine 
is,  249-252. 

May  avail  himself  of   prior  ex- 
periments, 252. 

Application  for  patent  to  be  made 
by,  if  alive,  271. 

Form  of  petition  for  patent  by 
joint,  271. 

Foreign,    may   obtain   a  United 
States  patent,  219. 

When  foreign,  may  file  a  caveat, 
208. 


In  V  EN  TOE  (continued.) 
Legal  representatives  of,  279, 280. 
May  appear  by  attorney,  281-283. 
Oath  of   an,  on  application   for 

patent,  317. 

Specification  to  be  signed  by,  285. 
May  testify  in  interference  cases, 

547. 
Must  apply  for  reissue  if  living, 

556. 
Must  apply  for  extension  although 

the  whole  invention  has  been 

assigned,  585. 
ITALY,  164-169. 

Law,  date,  and  where  recorded, 

165. 

Kinds  of  patents,  165. 
Previous  examination,  165. 
Duration,  165. 
Government  fees,  165. 
Documents  required,  and  where 

to  be  left,  166. 

Working  and  prolongation,  166. 
Annulment,  166. 
Infringements,  166. 
Assignments,  166. 
Specifications,     inspection,     and 

copies  of,  167. 

List  of  patents  delivered,  167. 
Specifications  published,  167. 
Proceedings  to  obtain  a  patent* 

167. 

Petition,  168. 
Description,  169. 
Memorandum,  169. 

JAMAICA,  169-171. 

Law,  date,  and  where  recorded,170. 
Kinds  of  patents,  170. 
Previous  examination,  170. 


696 


INDEX. 


JAMAICA  (continued.) 

Documents  required,  and  where 
to  be  left,  170. 

Working,  170. 

Duration,  170. 

Assignments,  170. 

Specifications,  inspection,  and 
copies  of,  170. 

Penalt)'  for  use,  or  for  imita- 
tion, or  counterfeit  without 
consent,  171. 

Government  fees,  171. 
JOINT  INVENTORS. 

Entitled  to  a  joint  patent,  271. 

Who  are,  272. 

Should  join  in  application  for 
patent,  272. 

Neither,  can  demand  one  sepa- 
rately, 271-273. 

Relation  subsisting  between,  273, 

274. 

JOINT  OWNERSHIP.  (See  Assign- 
ment.) 

JURISDICTION.  (See  Action  at  Law, 
Equity,   Supreme  Court  Dis- 
trict of  Columbia.) 
JURY.  (See  Evidence.) 

KNOWLEDGE,  PRIOR.  (See  Priority 
of  Invention,  Novelty,  Prior 
Foreign  Patent.) 

LAW. 

Presumptions  of.  (See  Evidence.) 
LAW  OF  NATURE.  (See  Abstract  Prin- 
ciple, E/ect.) 

Application  of,  patentable,  219. 
LEGAL  REPRESENTATIVES.  (See  Ad- 
ministrator.) 
LIBRARY. 
Attached  to  the  Patent  Office,  6. 


LICENSE.  (See  Assignment.) 

Who  is  a  licensee,  278,  629. 

Distinction  between,  and  assign- 
ment, 624-629. 

Need  not  be  recorded,  635. 

Construction  of,  635. 

Effect  of,  635-637. 

Assignment  of,  637. 

Relative  to  single  machines,  637- 
639. 

Assignee  may  granV639. 

Forms  of,  640-641. 
LICENSEE.  (See  License.) 
LOST  ART. 

Discoverer  of,  entitled  to  a  patent, 
252. 

MACHINE.  (See  Combination,  Iden- 
tity.) 

Definition  of,  236. 

When  patentable,  236,  538-546. 

Includes  new  combination,  237. 

Invention  as  respects,  23*. 

Product  of,  237. 

Divided  into  four  classes,  238. 
MAGISTRATE.  (See  Deposition,  Inter- 
ference.) 

May  administer  oaths,  318,  495. 

Certificate  of,  to  deposition,  500, 

504. 
MANDAMUS. 

To  the  Commissioner  of  Patents, 
409,  427. 

A  remedy  against  public  officers, 
409. 

To  compel  the  performance  of  min- 
isterial duties,  410. 

Principles  of  the  law  of,  applied  to 
the  Commissioner  of  Patents, 
415. 


INDEX. 


697 


MANDAMUS  (continued.) 

Power   of  the   supreme   court   of 

District  of  Columbia  to  issue 

the  writ  of,  415. 
Commanding  the  Commissioner  to 

perform  act  enjoined  by  law, 

417-425. 
Parties  in,  425. 
Proceedings  in,  425. 
MANUFACTURE.  (See  Composition  of 

Matter,  Art.) 

Definition  of,  231,  232,  239. 
Article  of,  when  patentable,  240, 

241,  540. 
MARKS. 

Required  to  be  put  on  patented 

articles,  15. 

Penalty  for  using  false,  15. 
MATERIAL.  (See  Double  Use,  Compo- 
sition of  Matter,  Novelty.) 
MAURITIUS,  171, 172. 

Law,  date,  and  where  recorded, 

171. 

Kinds  of  patents,  171. 
Government  fees,  171. 
Documents  required,  171. 
Specifications,      inspection,     and 

copies  of,  171. 
Duration,  171. 
Annulment,  172. 
Working,  172. 
MECHANICAL     EQUIVALENT.     (See 

Double     Use,     Improvement, 

Novelty.) 

What  is  a,  222-224. 
Substitution  of  a,  222-225. 
MECHANICAL  SKILL.    (See  Improve- 
ment, Novelty.) 
Does    not  constitute    invention, 

225. 
59 


MEXICO,  172, 173. 

Jurisdiction  of  patents,  172. 

Applications  to  Government  or 
local  authorities,  172. 

Prolongation  of  patents,  173. 

Fees,  173. 

Who  patentee  may  employ,  173. 
MISTAKE.  (See  Clerical  Error,  Re- 
issue.) 

Money  paid  by,  refunded,  34,  620. 
MODE.  (See  Process,  Manufacture.) 
MODELS. 

Not  required  with  caveat,  209. 

Applicant  to  furnish,  11,  314. 

To  be  classified,  6,  315. 

Commissioner  may  dispense  with, 
315. 

Requisites  of,  315. 

When,  will  be  returned,  6,  316. 

As  evidence,  316. 

Of  design  may  be  dispensed  with, 

428. 
MOTION. 

Notice  of,  366. 

NATURE.  (See  Law  of  Nature.) 
NETHERLANDS,  173-175. 

Law,  date,  and  where  recorded, 
173. 

Kinds  of  patents,  173. 

Previous  examination,  173. 

Duration,  173. 

Government  fees,  174. 

Documents,  where  to  be  left,  174. 

Working  and  extension,  174. 

Assignments,  174.. 

Annulment,  174. 

List  of  patents  delivered,  174. 

Specifications  published,  174. 

Proceedings  to  obtain  patent,  174. 


698 


INDEX. 


NEW  APPLICATION. 

Of  an  old  thing  to  a  new  purpose, 

221. 
NEWFOUNDLAND,  175-177. 

Law,  date,  and  where  recorded, 

176. 
Documents   required,  and  where 

to  be  left,  176. 
Duration,  176. 
Kinds  of  patents,  176. 
Specifications,  copies  of,  176. 
Assignments,  176. 
Working,  176. 
Government  fees,  176. 
Other  legal  provisions,  176. 
NEW  PATENT.  (See  Reissue.) 
NEW  SOUTH  WALES,  177,  178. 
Law,  date,  and  where  recorded, 

177. 

Kinds  of  patents,  177. 
Government  fees,  177. 
Duration,  177. 
Documents  required,  177. 
Proceedings  to  obtain  a  patent, 

177. 
NEW  ZEALAND,  178,  179. 

Law,  date,  and  where  recorded, 

178. 

Kinds  of  patents,  178. 
Duration,  178. 
Government  fees,  178. 
Documents  required,  where  left, 

178. 

Assignments,  179. 
Specifications,     inspections,    &c., 

179. 

Other  legal  provisions,  179. 
NON-PAYMENT.  (See  Fees.) 
NOTABY  PUBLIC.  (See  Magistrate.) 


NOTICE. 
Of  appeal  to  the  supreme  court  of 

District  of  Columbia,  378. 
Of  special  matter  in  actions  for 

infringement,  28, 
Of  taking  testimony,  496,  500. 
Of  objection  to  testimony,  498. 
Service  of,  for  taking  testimony, 

499. 

Of  opposition  to  extension,  591. 
Of  extension,  591. 
NOVELTY. 

What     constitutes,     227,     535- 

546. 

Presumption  of,  228. 
Examples  of,  538-546. 

OATH.  (See  Deposition.) 

By  applicant  for  letters  patent, 
11,317. 

When  invention  has  been  patent- 
ed abroad,  318. 

By  an  administrator  or  executor 
applying  for  letters   patent, 
318. 

In  case  of  assignment,  318. 

Before  whom  taken,  318,  495. 

Who  may  administer,  319. 

Should  not  be  to  blank  papers, 
319. 

Not  essential  to  validity  of  patent, 
321. 

Extends  to  all  in  the  specification, 
322. 

False  suggestion  in,  322. 

Prima  facie  evidence  of  novelty, 
323. 

Form  of,  by  sole  inventor  on  ap- 
plication for  letters  patent, 
323. 


INDEX. 


699 


OATH  (continued.) 

Of  invention  on  application  for 
patent  for  a  design  the  same 
as  in  other  cases,  429. 

Form  of,  on  application  for  patent 
for  a  design,  4.45, 

Form  of,  on  registration  of  trade- 
mark, 449. 

Form  of,  by  applicant  for  reissue, 
583. 

Form  of,  by  applicant  for  exten- 
sion, 606. 

Of  office  of  employee  of  the  Patent 

Office,  3. 
OMISSION.  (See  Reissue.)  , 

PAROL  EVIDENCE.  (See  Evidence.) 
PAETIES.    (See  Evidence,    Interfer- 
ence) 

In  mandamus,  425. 
PATENT. 

Specification  a  part  of,  284. 

Subject-matter  of  application  for, 
9,  218-259. 

Requisites  of  application  for,  259- 
271. 

Petition  for, 

Specification  of,  270-283. 

Oath  of  invention  not  essential  to 
the  validity  of,  321. 

Oath  prima  facie  evidence  of  va- 
lidity of,  323. 

Validity  of,  may  be  contested  after 
appeal  to  the  supreme  court 
of  District  of  Columbia,  384. 

Cannot  be  ordered  to  issue  by  su- 
preme court  of  District  of  Co- 
lumbia on  appeal,  387. 

For  design,  427-445. 

For  design  may  be  extended,  428. 


PATENT  (continued.) 

Officers  and  employees  not  to  ac- 
quire interest  in,  6.     « 

Issuing,  signing,  and  recording,  8, 
616. 

Contents  and  grant  of,  9. 

Date  of,  9. 

May  issue  to  assignees,  12. 

May  issue  to  legal  representatives, 
13. 

Right  of  purchasers  before,  15. 

Examination  of  application  for, 
329-343. 

Renewal  of  application  for,  345- 
348. 

Interfering  application  for,  450- 
494. 

Reissue  of,  551-584.   / 

Extension  of,  584-609. 

Assignment  of,  623-634. 

Form  of,  616. 

PATENTABILITY.  (See  Invention,  Nov- 
elty, Utility,  Combination.) 
PATENTED  ARTICLES. 

To  be  marked  or  labeled,  15. 

Falsely  marking,  15,  16. 
PATENTEE.  (See  Application,  Inven- 
tor.) 
PATENT  OFFICE. 

Establishment  of,  1. 

Officers  and  employees  of,  12. 

Additional  employees  of,  2. 

Annual  report  of,  4. 

Seal  of,  5. 

Display  of  models  in,  5,  6. 

Library  of,  6. 

Rules  of,  7. 

Records  of,  (See  Copies.) 
PENALTIES. 

For  false  marking,  15,  16. 


700 


INDEX. 


PERSONAL  REPRESENTATIVES.     (See 

Administrator.) 
PETITION,  (See  Application.) 

Application  for  patent  to  be  by 
way  of,  271. 

To  be  by  inventor  if  alive,  271. 

When  by  executor,  271. 

Form  of,  by  a  sole  inventor,  271. 

Form  of,  by  joint  inventors,  274. 

In  case  of  assignment  before  pat- 
ent, 274-279. 

Form  of,  by  inventor  for  assignee, 
279. 

Legal  representatives  may  apply 
by,  279. 

Form  of,  by  administrator,  280. 

Form  of,  by  executor,  280. 

May  contain  power  of  attorney, 
281-283. 

Power  of  attorney  contained  in. 

May  be  revoked,  283. 

To  be  signed  by  inventor  in  case 
of  assignment  of  invention, 
274,  279,  318. 

For  renewal  of  an  application  on 
which  the  final  fee  has  not 
been  paid,  344. 

For  renewal  of  rejected  applica- 
tions, 345. 

On  appeal,  to  set  forth  reasons, 
364. 

For  a  design,  the  same  as  in  other 
cases,  429. 

Form  of,  for  letters  patent  for  a 
design,  445. 

Form  of,  for  registry  of  trade- 
mark, 449. 

For  reissue,  582. 

For  extension,  604. 

For  disclaimer,  615. 


PHOTOGRAPHS. 

Of  design  received  only,  429. 
PLEADINGS.    (See   Action  at  Law, 

Equity.) 
PORTUGAL,  179-181. 

Law, date,  and  where  recorded,  179. 
Kinds  of  patents,  180. 
Previous  examination,  180. 
Duration,  180. 
Government  fees,  180. 
Documents,  where  to  be  left,  180. 
Working  and  prolongation,  180. 
Assignments,  180. 
Annulment,  180. 
,    Other  provisions,  181. 
Specifications,     inspection,    and 
copies  of,  (models,)  181. 

POSTPONESIENT. 

Of  cases  peading  before  the  Com- 
missioner, 366. 
POWER  or  ATTORNEY. 
To  be  filed  before  an  attorney  will 

be  recognized,  281,  282. 
After  filing,  correspondence  held 

with  attorney  only,  281. 
Clause  of  substitution  in,  282. 
Associate  attorney  must  file,  282. 
Revocation  of,  283. 
Stamp  required,  282. 
Form  of  petition  with,  282. 
Form  of,  283. 

Form  of  revocation  of,  283. 
PRESUMPTION.  (See  Evidence.) 
PKIMA  FACIE  EVIDENCE.  (See  Evi- 
dence.) 
PRINCIPLE. 
Abstract,  219. 
Identity  of,  241. 

PRINTED  PUBLICATIONS.  (See  Publi- 
cation.) 


IFDEX. 


701 


PRINTING. 

Copies  of  specifications,  &c.,  7 
Papers  not  legibly  written,  7 
PBIOB  FOBEIGN  PATENT,  254, 527, 535. 
PBIORITY  OF  INVENTION. 

What  constitutes.  247,  522-527. 
Evidence  of,  522. 
When  invention  must  be  reduced 
to  practice  to  constitute,  247- 
252, 522. 

Patent  prima  facie  evidence  of,  522. 
PBIOB  PUBLICATION. 

When,  will  avoid  a  patent,  30, 232, 

527-535. 
PROCESS. 

When  patentable,  234,  235,  236. 
PRODUCT. 

When  patentable,  234-237. 
PROOF.  (See  Evidence.) 
PRUSSIA,  181-183. 

Law,  date,  and  where  recorded, 

181. 

Kinds  of  patents,  181. 
Previous  examination,  182. 
Duration,  182. 
Government  fees,  182. 
Documents   required,  and  where 

to  be  left,  182. 
Working,  182. 
Assignments,  182. 
Other  legal  provisions,  182. 
Specifications,     inspection,      and 

copies  of,  182. 

List  of  patents  delivered,  182. 
Specifications  published,  183. 
Proceedings  to  obtain  a  patent, 

183. 
PUBLICATION. 

When  prior,  will  avoid  a  patent, 
252-251,  527-535. 
RO* 


PUBLIC  USE. 

What  is,  252,  254,  527-535. 

Two  years  prior  to  application  al- 
lowed, 264. 

What  constitutes,  264. 
PURCHASER. 

Before  patent,  rights  of,  15. 

QUEENSLAND,  183. 

(See  Commissioners  of  Patents' 

Journal,  No.  859.) 
QUESTIONS  OF  LAW.  (See  Evidence.) 
QUESTIONS  OF  FACT.  (See  Evidence.) 
Decisions   turning  upon,   not  in 
general  reversed    on    appeal, 
367-372. 

REASONS  OF  APPEAL. 

To  supreme  court  of  District  of 

Columbia,  379,  382. 
RECORD. 

Of  assignment  of  invention,  277. 
How  authenticated,  5. 
RECORDING.  (See  Assignment.) 
REFERENCES. 

Given  on  rejection  of  an  applica- 
tion for  letters  patent,  17, 334. 
REHEARING. 

After  rejection  by  primary  exam- 
iner, 333. 
How  often  allowed  before  primary 

examiner,  335. 
After  appeal  to  the  board  of  exam- 

iners-in-chief,  337,  338,  360. 
Before    the     examiners-in-chief, 

358. 
Examiners-in-chief  may  remand  a 

case  for,  360. 

By  order  of  the  Commissioner, 
358,  359. 


702 


INDEX. 


REHEARING  (continued.) 

Of  a  case  decided  by  one  Commis- 
sioner will  not  be  granted  by 
his  successor,  366. 
REISSUE. 

Of  letters  patent,  22,  551. 

Resume  of  the,  concerning,  551-555. 

To  whom  granted,  555. 

Inventor,  if  living,  to  make  appli- 
cation for,  556. 

Petition  for,  must  show  concur- 
rence of  part  owners,  556. 

Rights  of  assignees  on,  556. 

Statement  of   title  on,  558. 

Application  for,  immediately  acted 
on,  558.. 

Defects  cured  by,  558. 

There  may  be  more  than  one,  551. 

Use  under  defective  patent  no  bar 
to,  561. 

May  be  granted  after  extension,561. 

When  clerical  error  may  be  cured 
by,  562-568. 

Divisions  of,  action  of  the  Com- 
missioner on, 570. 

Must  be  for  the  same  invention, 
574-579. 

Specification  subject  to  revision  on, 
579-580. 

Surrender  of  patent  does  not  take 
effect  until  the  granting  of,  580. 

Rights  conferred  by,  581-582. 

Form  of  petition  for,  582. 

Form  of  oaths  for,  583. 
REJECTION. 

Of  application  for  patent,  17, 334. 

Invention  may  be  assigned  after, 
275. 

Of  an  application  for  patent,  which 
would  be  sustained  in  law  299. 


REJECTION  (continued.} 
Rehearing  after,  333, 335, 337, 338 

358,  360. 

Amendment  after,  334-343. 
REMEDY.      (See    Action    at    Law, 

Equity.) 
RENEWAL. 

Of  an  application  on  which  the 
final  fee  has  not  been  paid, 
13,  343-345 

Who  may  petition  for,  344. 
To  be  made  within  two  years  from 
the  notification  of  allowance, 
344. 
New  specification  not  required  in 

case  of,  344. 
When  interference  will  be  declared, 

345-346. 

Form  of  petition  for,  345. 
Of  withdrawn  and  rejected  appli- 
cations filed  prior  to  July  8, 
1870,  13. 

Consequences  of  neglect  in  apply- 
ing for,  345. 
Formal,  346. 
Intent  of  the  act  of  July  8,  1870, 

_  concerning,  346. 
Petition  for,  to  be  accompanied  by 

a  demand  for  action,  347. 
REPAIR. 

Owner  of  patented  machine  may, 

638. 

REPLICATION.  (See  Equity.) 
REPORT. 

Of  Commissioner  to  Coflgress,  4. 
RESULT.  (See  Effect.} 
RULES. 

Power  of  Commissioner  to  make,  7. 

Of  the  supreme  court  of  District 

of  Columbia,  on  appeal,  385. 


INDEX. 


703 


RUSSIA,  183-186. 

Law,  date,  and  where  recorded, 

184. 

Kinds  of  patents,  184. 
Previous  examination,  184. 
Duration,  184. 
Government  fees,  184. 
Documents,  where  to  be  left,  184. 
Working  and  prolongation,  184. 
Assignments,  185. 
Specifications,     inspection,     and 

copies  of,  185. 

List  of  patents  delivered,  185. 
Specifications  published,  185. 
Proceedings  to  obtain  a  patent, 

185. 

SALARIES. 

Of  the  Commissioner  of  Patents,  2. 

Of  the  Assistant  Commissioner,  2. 

Of  the  examiner-in -chief,  2. 

Of  the  chief  clerk  of  the  Patent 
Office,  2. 

Of  principal  examiners,  3. 

Of  first  assistant  examiners,  3. 

Of  clerks  of  the  Patent  Office,  3. 
SALE.  (See  Assignment,  License.) 
SAXONY,  186,  187. 

Law,  date,  and  where  recorded, 
186. 

Kinds  of  patents,  186. 

Previous  examination,  186. 

Duration,  186. 

Government    fees,    stamps,    &c., 
186. 

Documents,    where    to    be    left, 
186. 

Working  and  extension,  187. 

Assignments,  187. 

Annulment,  187. 


SAXONY  (continued.) 

Lists  of  patents  delivered,  187. 

Specifications,  187. 

Proceedings  to  obtain  a  patent, 

187. 
SCIENCE. 

Mere  discovery  in,  not  patentable, 

219,  226,  227. 
SEAL. 

Of  the  Patent  Office,  5. 
SECRETARY  OF  THE  INTERIOR. 

To  exercise  general  supervision,  4. 
To  appoint  clerks  of  the  Patent 

Office,  2. 
Refusal  to  recognize  an  attorney 

subject  to  the  approval  of,  7. 
Rules  of  the  Patent  Office  subject 

to  the  approval  of,  7. 
SERVANT. 

When  presumed  an  inventor,  494- 
SKILL. 

Mechanical,  225. 

Specification  addressed  to  persons 

of  competent,  287. 
SPAIN,  188-191. 

Law,  date,  and  where  recorded, 

188. 

Kinds  of  patents,  188. 
Previous  examination,  188. 
Duration,  188. 
Government  fees,  188. 
Documents,  where  to  be  left,  188. 
Working  and  extension,  189. 
Infringements,  189. 
Assignments,  189. 
Specifications,      inspection,     and 

copies  of,  189. 

List  of  patents  delivered,  189. 
Originals  of  specifications,  (mod- 
els,) 189. 


704 


INDEX. 


SPAIN  (continued.) 
Proceedings  to  obtain  a  patent,  189. 
Form  of  petition  to  the  king,  190. 
SPECIFICATION. 
A  part  of  the  patent,  284. 
Correction  of,  may  be  required  on 

examination,  340. 
Statute  requisites  of,  10,  284. 
Rules  of  the  Patent  Office  concern- 
ing, 285. 
Construed   together   with  letters 

patent,  286. 
Occupies  a  different  position  from 

that  in  England,  286. 
Annexed  drawings  form  a  part  of, 

286. 

Object  of,  286. 
Addressed  to  persons  of  competent 

skill,  287. 
Must  enable  skilled  workmen  to 

apply  without  invention  of 

their  own,  288. 

What  need  not  be  stated  in,  288. 
Variable  proportions  need  not  be 

stated  in,  290. 
Object  of  the  claim  to  ascertain 

what  is  new,  291,  297,  303. 
No  particular  mode  of  claiming 

what  is  new  in,  prescribed, 

292,  297. 
Object  of  the  claim  not  to  aid  the 

description,  291. 

Construction  of  the  claim,  291, 292. 
Claim  a  means  of  clearly  present- 
ing the  subject-matter,  292. 
Must  distinguish  between  the  old 

and  the  new,  291,  292,  297= 
Language  employed  in,  293. 
Words   substantially  as  described 

and  the  like,  293. 


SPECIFICATION  (continued.) 

Strictures  upon  the  use  of  present 
participles,  294,  295. 

The  -words  producing,  so  construct- 
ing, &c.,  294,  295. 

Construction  of  the  word  arrange- 
ment, 295. 

How  improvements  should  be  set 
forth,  297. 

Implication  in  regard  to  parts  not 
claimed,  297,  298. 

Invention  should  not  be  described 
as  a  mode  or  function,  298. 

Should  not  be  vague  or  ambigu- 
ous, 298,  299. 

May  be  saved  by  construction 
which  ought  not  to  have  been 
allowed,  299,  300. 

Duty  of  Commissioner  of  Patents 
concerning,  300. 

Must  disclose  the  patentees'  best 
knowledge,  300. 

Fraudulent  concealment  in,  300. 

False  suggestion  in,  300. 

Order  of,  301. 

Statement  of  object  of  invention 
in,  301. 

Description  of  detail  in,  302. 

Should  not  be  signed  in  blank, 
319. 

Form  of,  for  a  machine,  304. 

Form  of,  for  a  process,  306. 

Form  of,  for  a  composition  of  mat 
ter,  307. 

Will  not  be  returned  for  amend- 
ment, 341. 

Amendment  of,  after  rejection, 
334,  343. 

New,  not  required  on  renewal  of 
an  application,  344. 


INDEX. 


705 


SPECIFICATION  (continued.) 

For  a  design,  the  same  as  in  other 

cases,  429. 

Form  of,  for  a  design,  445. 
SPECIMEN  OP  INGREDIENTS. 

Applicant  to  furnish,  11, 315 
STAMP. 
Five-cent  revenue,  for  each  sheet 

of  an  assignment,  278. 
Fifty-cent  revenue,  for  power  of 
attorney,  282. 

SUBJECT-MATTEB, 

Of  application  for  letters  patent, 
218,  259. 

Of  patents  for  designs,  427. 
SUBPENA. 

Clerks  of  United  States  courts  may 

issue,  18,  19,  495. 
SUBSTITUTION.     (See     Double     Use, 

Equivalents.) 
SUPREME  COURT,  D.  C.,  APPEAL  TO. 

From  the  decision   of    Commis- 
sioner, 20,  21,  377-408, 673. 

To  the  court  sitting  in  bane,  378. 

Appellant  to  notify  Commissioner 
on,  378. 

Papers  accompanying   notice  of, 
378. 

Time  of  filing  reasons  of,  379. 

Beasons  of,  should  not  be  vague,379. 

Forms  furnished  by  the  office  on, 
380. 

Appellant  to  furnish  certified  cop- 
ies on,  380. 

Duties  of  Commissioner  in  case  of, 
381.  | 

Reasons  of  Commissioner  in  case 
of,  381. 

Commissioner  and  examiner  may 
be  examined  on,  381, 674 
45 


SUPREME  COURT  (continued.) 

Duty  of  the  court.  382,  fi74. 

Revisions  to  be  confined  to  reasons 
of,  382. 

Case  tried  upon  evidence  before 
Commissioner,  383. 

Decision  of,  to  govern  further  pro- 
ceedings, 384. 

Validity  of  patent  may  be  con- 
tested after,  384. 

Rules  to  govern,  385,674. 

When,  does  not  lie,  386. 

Whether  a  patent  can  be  ordered 
to  issue  by,  387- 

When    specification    must    have 
been  examined  before,  387. 

Jurisdiction  on,  387-401. 

When  decision  on,  is  binding,  401. 

Decisions  on,  to  be  followed  as 
precedents,  407. 

Form  of  petition   678. 

Form  of   certificate  of  Commis- 
sioner, 408. 

Form  of  notice  and  reasons  of,  408. 
SUPREME  COURT,  U.  S.  (See  Action 

at  Law,  Equity.) 
SURRENDER.  (See  Reissue.) 
SWEDEN,  191-193. 

Law,  date,  and  where  recorded,191. 

Kinds  of  patents,  191. 

Previous  examination,  191. 

Duration,  192. 

Government  fees,  192. 

Documents    required,  and  where 
to  be  left,  192 

Working  and  extension,  192. 

Assignments,  192. 

Other  legal  provisions,  192. 

Specifications,    inspection,    and 
copies  of,  192. 


706 


INDEX. 


SWEDEN  (continued.) 

List  of  patents  delivered,  193. 
Specifications  published,  193. 
Originals  of  specifications,  (mod- 
els,) 193. 

TASMANIA,  193-195.  ' 

Law,  date,  and  where  recorded, 
193. 

Kinds  of  patents,  193. 

Duration,  193. 

Government  fees,  193. 

Documents  required,  and  where  to 
be  left,  194. 

Assignments,  194. 

Originals  of  specifications,  Ac., 
194. 

Other  legal  provisions,  194. 
THEORY.  (See  Principle.) 

Must  be  reduced  to  practice  to  be 

patentable,  226. 
TIME. 

To  complete  and  prosecute  appli- 
cation for  a  patent,  260, 
330. 

Two  years'  use  prior  to  applica- 
tion allowed,  264. 

Effect  of  delay  at  the  Patent  Office, 

265. 

•  Invention    may    be    abandoned 
within  two  years,  266. 

Renewal  of  an  application  on 
which  the  final  fee  has  not 
been  paid  to  be  made  within 
two  years,  343. 

Of  hearing  before  the  Commission- 
er, 366. 

Of  filing  reasons  of  appeal  to  the 
supreme  court  of  the  District 
of  Columbia,  379. 


TIME,  (continued.) 

For    which    design    patents    are 
granted,  428,  437. 

For  taking  testimony  postponed, 
503. 

For  taking  testimony  in  interfer- 
ence cases,  503. 

To  complete  application  after  cav- 
eat, 208. 
TBADE-MARKB. 

Common-law  remedies  preserved 
concerning,  41. 

Object  and  effect  of  the  law  of  July 
8,  1870,  concerning,  446. 

Patent  Office    requirements  con- 
cerning, 448. 

Five  duplicate  copies  of,  to  be  fur- 
nished, 448. 

Assignment  of,  to  be  recorded,  81, 
449. 

Form  of  petition  for  the  registry 
of  trade-mark,  449. 

Form  of  oath,  449. 

Form  of  transfer  of,  450. 

Form  of  certificate,  450. 

Who  are  entitled  to,  36. 

Requirements  of  the  law,  36,  37. 

Term  of,  38. 

Renewal  of,  38. 

Protection  afforded  by,  38. 

Remedy  for  wrongful  use  of,  39. 

Proof  of  registration  of,  40. 

Penalty   for  fraudulent  registra- 
tion of,  40,  41. 
TRANSFER. 

Form  of,  of  ft  trade-mark,  450. 
TRINIDAD,  195. 

Law,  date,  and  where  recorded, 
195. 

Duration,  195. 


DEX. 


701 


Cfovernment  fees,  195. 
Kinds  of  patents,  1Q' 
Documents  required,  Ac.,  195. 
Specifications,  195. 

UJTITED  STATES  COMMISSIONEE.  (See 

Magistrate.) 

UNITED  STATES  CONSUL.  (See  Oaths.) 
UNITY  OB  DIVEBSITY  OF  INVENTION. 
What    inventions    may   be    in- 
cluded   in   a  single    patent, 
254-259. 
Discretion  of  the  Commissioner  to 

decide,  255-259. 

When  invention  cannot  be  pat- 
ented in  a  second  application, 
255. 

USE.  (See  Abandonment.) 
Two  years,  prior  to  application, 

allowed,  264. 
Definition  of  public,  264. 
Definition  of  common,  264. 
For  two  years,  of  designs  not  pro- 
vided for  by  law,  438. 
USEFUL. 

Meaning  of  the  word  in  the  pat- 
ent laws,  229. 
UTILITY. 

What  constitutes,  229,  535. 
Discretion  of  Commissioner  to  de- 
termine, 230. 

Designs  may  be  patented  for  their, 
435. 

VENDOB.  (See  Assignment,  Licen&e.) 
VICTOBIA,  (Australia,)  195-199. 
Law,  date,  and  where  recorded, 
195. 


VICTOBIA  (continued) 
Kinds  of  patents,  196. 
Previous  examination,  196. 
Duration,  196. 
Government  fees,  196. 
Documents,  where  to  be  left,  197. 
Assignments,  197. 
Specifications  and  indexes,  197. 
Lists  of  patents  delivered,  197. 
Penalties  and  fines,  198. 
Proceedings  to  obtain  a  patent, 

198. 
Form  of  application,  199. 

WEST  INDIES,  (Dutch,)  200,  201. 
Law,  date,  and  where   recorded. 

200. 

Kinds  of  patents,  200. 
Duration,  200. 
Government  fees,  200. 
Documents  required,  Ac.,  200. 
Working,  200. 
Assignments,  200. 
Annulments,  200. 
List  of  patents  delivered,  201. 
Specifications  published,  201. 
Originals  of  specifications,  (mod- 
els,) 201. 

WITNESSES.    (See    Deposition,    Evi- 
r          dence.) 

May  be  subpenaed,  19,  495. 
Fees  and  rights  of,  19, 496. 
Competency  of,  548. 
WOBKMAN. 
When     presumed     inventor    as 

against  employer,  492-49-1. 
WBIT  OP  EBBOB. 

To  the  Supreme  Court  of  the 
United  States  in  patent  causes, 
25. 


708 


INDEX. 


WURTEMBERG,  201-203. 

Law,  date,  and  where  recorded, 

201. 

Kinds  of  'patents,  202. 
Previous  examination,  202. 
Duration,  202. 
Government  fees,  202. 
Documents   required,  and   where 

to  be  left,  202. 
Working  and  prolongation,  202. 


WURTEMBERG,  (continued.') 
Assignments,  202. 
Specifications,   inspection,   and 

copies  of,  202. 
Annulment,  202. 
List  of  patents  delivered,  202. 
Specifications  published,  203. 
Other  provisions,  203. 
Proceedings  to  obtain  a  patent, 

203. 


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